Eleven IP Holdings, LLCv.K11 Group Limited

Trademark Trial and Appeal BoardOct 30, 2020

91230955 (T.T.A.B. Oct. 30, 2020)

This Opinion is Not a Precedent of the TTAB Oral Hearing: July 23, 2020 Mailed: October 30, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Eleven IP Holdings, LLC v. K11 Group Limited _____ Opposition No. 91230955 Opposition No. 91230956 Opposition No. 91236465 (Consolidated) _____ Chris C. Polychron and Nicole S. Blakely of Coast Law Group LLP, for Eleven IP Holdings, LLC. Kevin Viau and Otto O. Lee of Intellectual Property Law Group LLP, for K11 Group Limited. _____ Before Taylor, Wellington and Pologeorgis, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: This is a consolidated proceeding1 involving three oppositions brought by Eleven IP Holdings, LLC (“Opposer”) against marks sought to be registered by K11 Group 1 Opposition No. 91230955 and Opposition No. 91230956 were consolidated by Board order on July 14, 2017, and Opposition No. 91236465 was added to that consolidated proceeding by Board order on December 21, 2017. The record in these consolidated proceedings is maintained in Opposition No. 91230955 and all citations are to that proceeding unless otherwise noted. Citations in this opinion are to the TTABVUE docket entry number and, Opposition Nos. 91230955, 91230956 and 91236465 - 2 - Limited (“Applicant”). Opposer opposes Applicant’s applications to register the stylized mark 2 (Opposition No. 91230955); the stylized mark 3 (Opposition No. 91230956); and the stylized mark 4 (Opposition No. 91236465), all three for the following services: Leasing and rental of real estate, real estate agency services, real estate management services, real estate valuation services, real estate appraisal, real estate brokerage, real estate investment services, rental of offices and apartments; financial advisory, analysis, consultancy, and information services; capital investment services; financial valuation services; advisory and consultancy services relating to finance, investments, and real estate in International Class 36. where applicable, the electronic page number where the document or testimony appears. Because the Board primarily uses TTABVUE in reviewing evidence, it prefers that citations to non-confidential parts of the record include the TTABVUE docket entry number and the TTABVUE page number. See RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1804 (TTAB 2018); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) §§ 801.01, 801.03 (2020). 2 Application Serial No. 87023754 was filed May 3, 2016 under Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e), based on Hong Kong Registration No. 301285209, registered February 11, 2009. The application includes the following description of the mark: “The mark consists of the stylized wording ‘K11.’” Color is not claimed as a feature of the mark. 3 Application Serial No. 87103079 was filed on July 13, 2016, based on a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). The application includes the following description of the mark: “The mark consists of the stylized wording ‘ATELIER K11.’” Color is not claimed as a feature of the mark. 4 Application Serial No. 87142291 was filed August 17, 2016 under Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e), based on Hong Kong Registration No. 303879321, registered August 23, 2016. The application includes the following description of the mark: “The mark consists of the stylized wording ‘K11.’” Color is not claimed as a feature of the mark. Opposition Nos. 91230955, 91230956 and 91236465 - 3 - In each of the three proceedings, Opposer has pleaded a claim of likelihood of confusion.5 Opposer alleges in each that Applicant’s mark is likely to be confused with its famous and inherently distinctive trademarks “ELEVEN” and “ ,” that are the subject of numerous valid and subsisting registrations and applications, listed in Exhibit A to the Notice of Opposition.6 Those referenced in Opposer’s brief are detailed, in relevant part, below:7 Registration No. Mark Registration Date/Status Relevant Services 4265159 ELEVEN July 24, 2012 Sections 8 affidavit received; Section 15 affidavit acknowledged resort lodging services; providing temporary lodging services in the nature of a tourist home, all excluding restaurant services (Class 43) 4269487 ELEVEN January 1, 2013 Sections 8 affidavit received; Section 15 affidavit acknowledged travel agency services, namely, making reservations and booking for temporary lodging; providing travel lodging information services for travelers (Class 43) 4384681 The registration includes the August 13, 2013 Sections 8 affidavit received; Section 15 affidavit acknowledged rental of homes (Class 39) 5 Opposer also pleaded a dilution claim (1 TTABVUE 10-11, ¶¶ 21-28), but indicated in its brief (and at oral hearing) that it had elected not to pursue that claim. Accordingly, Opposer’s dilution claim will not be further considered. 6 1 TTABVUE. 7 1 TTABVUE. Opposer also alleged ownership of Registration Nos. 4180401, 4269438, 4610113, and 4932240, and Registration No. 4269487 was listed twice in Exhibit A. Opposition Nos. 91230955, 91230956 and 91236465 - 4 - Registration No. Mark Registration Date/Status Relevant Services description reads: “The mark consists of a stylized number ‘11’ within a diamond shape.” Color is not claimed a feature of the mark 4610119 The registration includes the description reads: “The mark consists of a stylized number ‘11’ within a diamond shape.” Color is not claimed a feature of the mark September 23, 2014 travel agency services, namely, making reservations and booking for temporary lodging; providing travel lodging information services for travelers (Class 43) 4621491 The registration includes the description reads: “The mark consists of a stylized number ‘11’ within a diamond shape.” Color is not claimed a feature of the mark. October 14, 2014 hotels; hotel services, namely, providing luxury hotel accommodations; resort lodging services; providing temporary lodging services in the nature of a home; pubs; bar services; restaurant services (Class 43) 87005886 (Now Registration No. 5868718) ELEVEN September 24, 2019 Banking and financing services; Financial services, namely, wealth management services; Investment banking services (Class 36) Opposition Nos. 91230955, 91230956 and 91236465 - 5 - Registration No. Mark Registration Date/Status Relevant Services 87005887 (Now Registration No. 5885688) The registration includes the description reads: “The mark consists of a stylized number ‘11’ within a diamond shape.” Color is not claimed a feature of the mark October 15, 2019 Banking and financing services; Financial services, namely, wealth management services; Investment banking services (Class 36) In each answer, Applicant denies the salient allegations in the Notices of Opposition and, under the heading “Affirmative Defenses,” pleads: (1) laches; estoppel, and acquiescence; (2) unclean hands; (3) failure to state at claim; and (4) that there is no likelihood of confusion between the parties’ marks as they and the services are sufficiently dissimilar.8 Applicant did not pursue the affirmative defenses of estoppel, acquiescence and waiver so we deem these defenses waived. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422-23 n.7 (TTAB 2014); Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1752 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014). Failure to state a 8 Applicant, in ¶ 34 of its Answer, also gave notice that “it intends to rely upon additional defenses that become available or apparent …, and thus reserves the right to amend the Answer to assert such additional defenses.” 10 TTABVUE 5. Such a statement is not an affirmative defense but merely an advisory statement that Applicant may amend its pleading at some future date. A defendant cannot reserve unidentified defenses since it does not provide a plaintiff fair notice of such defenses. We accordingly give no further consideration to ¶ 34. Opposition Nos. 91230955, 91230956 and 91236465 - 6 - claim is not an affirmative defense. Notwithstanding, insofar as Applicant neither filed a formal motion to dismiss for failure to state a claim during the interlocutory phase of this consolidated proceeding, nor argued this asserted affirmative defense in its brief, it is hereby waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d at 1753 n.6. We consider Applicant’s allegations of no likelihood of confusion in item 4 as an amplification of Applicant’s denial that its marks are likely to cause confusion with Opposer’s marks. Last, although Applicant, at oral hearing, essentially explained that its pleaded laches defense in item 1 was intended to put Opposer on notice of its assertion of the Morehouse defense, see Morehouse Mfg. Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969), it was not plead with sufficient particularity to convey such notice. Applicant may not rely on an unpleaded defense. We therefore consider below whether the “prior registration” or Morehouse defense was tried by implied consent under Fed. R. Civ. P. 15(b)(2). I. Preliminary Matters A. The Morehouse Defense Fed. R. Civ. P. 15(b)(2), made applicable to Board proceedings by Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a), provides in part that when claims or issues not raised by the pleadings are tried by express or implied consent of the parties, an amendment of the pleadings may be made to cause them to conform to the evidence. “Implied consent to the trial of an unpleaded issue can be found only where the non-offering party (1) raised no objection to the introduction of evidence on the issue, and (2) was Opposition Nos. 91230955, 91230956 and 91236465 - 7 - fairly apprised that the evidence was being offered in support of the issue.” TBMP § 507.03(b). See also Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1138 (TTAB 2009); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720-1721 (TTAB 2008); Boise Cascade Corp. v. Cascade Coach Co., 168 USPQ 795, 797 (TTAB 1970) (“Generally speaking, there is an implied consent to contest an issue if there is no objection to the introduction of evidence on the unpleaded issue, as long as the adverse party was fairly informed that the evidence went to the unpleaded issue.”). “The question of whether an issue was tried by consent is basically one of fairness. The non-moving party must be aware that the issue is being tried, and therefore there should be no doubt on this matter.” Morgan Creek, 91 USPQ2d at 1139; see also TBMP § 507.03(b). Upon review of the record, Applicant, during trial, made reference to “prior registrations” in its notice of reliance when it stated with regard to all of the attached exhibits that: [the exhibits] are relevant to show lack of likelihood of confusion between the parties’ marks, or dilution of Opposer’s marks, as well as defenses related to Opposer allowing prior registration of the same or similar marks of Applicant, delaying or failing to act to challenge Applicant’s marks, and weakness and dilution of Opposer’s marks due to third party registration and use. Applicant’s NOR at ¶ 11 (emphasis added).9 We find this reference and appended evidence fairly apprised Opposer that Applicant intended this evidence to support a Morehouse defense. Moreover, although Opposer affirmatively asserts in its reply 9 30 TTABVUE 4. Opposition Nos. 91230955, 91230956 and 91236465 - 8 - brief that “the [Morehouse] defense was never alleged … and accordingly cannot be pursued,” Opposer’s Reply Br. p. 1010, Opposer devoted a significant portion of it its brief addressing the merits of that defense. Based on the evidentiary record and the briefs in this case, we find that the Morehouse defense was tried by the consent of the parties. Accordingly, we deem the pleadings so amended and address the defense below. The “prior registration” or Morehouse defense is an equitable defense in the nature of laches or acquiescence. Morehouse Mfg. Corp. v. J. Strickland 160 USPQ at 717. The defense is raised when a defendant claims that it already owns a substantially similar registered mark for substantially similar goods and/or services such that the second (or more) registrations sought cause no added injury to the plaintiff. See id. See also TBMP § 311.02(b)(1), and the authorities cited therein. In addition, the Morehouse defense will not be applied where a defendant’s prior registration did not issue until after the commencement of the proceeding in which it is asserted as a basis for the defense. See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1737 (TTAB 2001). Applicant’s asserted Morehouse defense is not applicable in this case for two reasons. First, all of Applicant’s asserted prior registrations issued after this proceeding had commenced, id., and second, the marks at issue here are not “substantially similar” to the marks in the asserted prior registrations. See, e.g., Mag Instrument, Inc. v. The Brinkman Corp., 96 USPQ2d 1701, 1711-12 (TTAB 2010) (The 10 38 TTABVUE 11. Opposition Nos. 91230955, 91230956 and 91236465 - 9 - marks MAGNUM MAX and MAGNUM FIRE were found not sufficiently identical for purposes of asserting the Morehouse defense.). In view of the foregoing, Applicant may not rely on the Morehouse defense. B. Evidentiary Rulings Applicant objects to Exhibit 20 of the declaration of Kyra Martin, arguing that it “should be excluded from consideration to show that Opposer’s services appeared in, were covered by, or were mentioned in the listed publications,” because Opposer “has essentially merely included a list of titles or links without the material actually attached” and such a list is not sufficient to introduce the listed publications into the record. Applicant’s Br. p. 11-12.11 Opposer’s listing of publications is properly of record, having been introduced by the Martin declaration and not seasonably objected to by Applicant. Cf. Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1291 (TTAB 1986) (Opposer’s notice of reliance was received without appended copy of printed publication, but was not objected to until briefing. The Board considered the materials furnished with the notice of reliance.). Applicant’s objection therefore is overruled. We note, however, that a mere listing of publications does not make the publication themselves of record. As such, the mere listing has no probative value to show what services were mentioned in the listed publications. 11 35 TTABVUE 12-13. Opposition Nos. 91230955, 91230956 and 91236465 - 10 - Similarly, the Martin declaration at ¶ 2 includes a statement that the services provided by Opposer’s licensees under the ELEVEN Marks have been featured in hundreds of articles in nationally and internationally distributed publication, and provides a website link to the “press” page of Opposer’s website, “where many have been compiled.” This is insufficient to make the webpages themselves of record. In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013) (providing hyperlinks insufficient to make evidence of record). Therefore, we consider only the example webpages made of record as exhibits to the declaration. II. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122, 37 C.F.R. § 2.122, the files of the subject applications. In conformance with the evidentiary rulings, the record also includes the following: A. Opposer’s Evidence 1. Opposer’s notice of reliance on: a. Hard copies of pleaded registration Nos. 4265159, 4269487, 4384681, 4610119 and 4621491 together with printouts from the Trademark Status & Document Retrieval (TSDR) database showing current title and status; and b. Copies of printouts for pleaded application Serial Nos. 86939564, 87005886 and 87005887, taken from the TSDR data base.12 2. The Testimony declaration of Kyra Martin, Director of Administration for Grassy Creek, LLC (Grassy Creek) and Irwin Backcountry Guides, LLC (IBG), with Grassy Creek providing management services for IBG and other licensees of Opposer, with 12 26 TTABVUE. Opposition Nos. 91230955, 91230956 and 91236465 - 11 - Exhibits 9-19 (consisting of articles from various publications discussing the services provided by Opposer’s licensees),.13 C. Applicant’s Evidence 1. Applicant’s Notice of Reliance on: a. Printouts of Applicant’s Registration Nos. 5258786, 5299107 and 5239406 taken from the TSDR database; b. Printouts of five applications, i.e., Serial Nos. 87255991, 87313493, 87771182, 87771198, and 87771219 filed by Applicant taken from the TSDR database; and c. Printouts of third-party registrations of ELEVEN- and 11- formative marks taken from the TSDR data base; and d. An article entitled “K11 Musea Is the Culmination of Billionaire Collector Adrian Cheng’s Vision for a Hybrid Art-and-Luxury Empire. But He’s Not Done Yet.”14 2. The testimony declaration, with Exhibits A-D, of Sze Wan Lisa, Head of Legal of K11 Group Limited.15 III. Entitlement to Bring a Statutory Cause of Action16 To establish entitlement to bring a statutory cause of action under Section 13 of the Trademark Act, a plaintiff must demonstrate a real interest in the proceeding 13 27 TTABVUE. 14 30 TTABVUE. 15 31-32 TTABVUE. Although the declaration references Exhibits A-E, it was accompanied only by Exhibits A-D. However, Exhibit E, identified as an article entitled “K11 Musea Is the Culmination of Billionaire Collector Adrian Cheng’s Vision for a Hybrid Art-and-Luxury Empire. But He’s Not Done Yet,” although not included in the submission, was previously made of record via Applicant’s notice of reliance. 16 Our decisions have previously analyzed the requirements of Section 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this inquiry as entitlement to bring a statutory cause of action. Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-26 (2014). Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain equally applicable. Opposition Nos. 91230955, 91230956 and 91236465 - 12 - and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Opposer’s entitlement to oppose registration of Applicant’s marks is established by its pleaded registrations that were properly made of record, as noted above, which the record shows to be valid and subsisting, and owned by Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). IV. Priority Because Opposer’s pleaded registrations are properly of record, priority is not in issue in the oppositions with respect to those marks for the services listed therein. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). In addition, Opposer made its pleaded applications, Serial No. 87005886 for the mark ELEVEN and Serial No. 87005887 for the design mark , of record, both filed on April 22, 2016 and both for “Banking and financing services; Financial services, namely, wealth management services; Investment banking services.” An opposer may rely on the filing date of its application to establish constructive use of its mark on that date. However, any judgment entered in favor of an opposer relying on such constructive use is contingent upon the ultimate issuance Opposition Nos. 91230955, 91230956 and 91236465 - 13 - of a registration. See Spirits Int’l, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99USPQ2d 1545, 1549 (TTAB 2011) (citing Compagnie Gervais Danone v. Precision Formulations LLC, 89 USPQ2d 1251 (TTAB 2009). Because the April 22, 2016 filing date of Opposer’s applications is prior to the filing dates of Applicant’s involved applications, May 3, 2016, July 13, 2016 and August 17, 2017, respectively, Opposer has contingent priority with respect to the services identified in its pleaded applications. IV. Likelihood of Confusion We focus our analysis on whether there is a likelihood of confusion between Applicant’s marks and identified services and the marks in Opposer’s pleaded Registration No. 4265159, ELEVEN (in standard characters), for, in relevant part, “resort lodging services; providing temporary lodging services in the nature of a tourist home, all excluding restaurant services,” the composite mark in Registration No. 4384681, , for “rental of homes,” and on pleaded application Serial Nos. 87005886 (’886 App.) and 87005887 (’887 App.) respectively, for the same two marks noted above and both for “banking and financing services; financial services, namely, wealth management services; investment banking services,” because if there is no likelihood of confusion between these marks and services then Applicant’s marks and services are not likely to be confused with Opposer’s other pleaded marks, which include additional or different services. See Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). Opposition Nos. 91230955, 91230956 and 91236465 - 14 - Our determination under Section 2(d) is based on 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) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2 Commc’ns., Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). Typically, two key considerations in any likelihood of confusion analysis are the similarities between the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380 F.3d 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). In certain cases, however, the Board may find that a single DuPont factor is dispositive of likelihood of confusion. Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); Kellogg Co. v. Pack’Em Enters. Inc., 14 USPQ2d 1545, 1550 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). We discuss the relevant DuPont factors below. A. The Services We first consider the DuPont factor regarding the similarity or dissimilarity between the parties’ respective services as identified in the applications and pleaded Opposition Nos. 91230955, 91230956 and 91236465 - 15 - registrations. See Octocom Sys., Inc. v. Houston Computers Servs. 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 [or services] set forth in the application regardless of what the record may reveal as to the particular nature of an applicant ’s goods [or services], the particular channels of trade or the class of purchasers to which the sales of goods [or services] are directed.”). See also Paula Payne Prods. v. Johnson Publ’g 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 [or services].”). For convenience, we repeat the involved services below. Applicant’s services are “leasing and rental of real estate, real estate agency services, real estate management services, real estate valuation services, real estate appraisal, real estate brokerage, real estate investment services, rental of offices and apartments; financial advisory, analysis, consultancy, and information services; capital investment services; financial valuation services; advisory and consultancy services relating to finance, investments, and real estate.” Opposer’s identified services include, in relevant part, “providing temporary lodging services in the nature of a tourist home ” (’159 Reg.); “rental of homes” (’681 Reg.); and “banking and financing services” (’886 and ’887 Apps.). Opposer maintains that the services identified in each of Applicant’s three involved applications are broadly described to include items that encompass and are Opposition Nos. 91230955, 91230956 and 91236465 - 16 - closely related to services for which it has priority. We agree. As pointed out by Opposer, Applicant’s broadly worded “rental of real estate” encompasses the more narrowly defined “rental of homes” recited in the ’159 Reg. Similarly, Applicant’s “rental of real estate” encompasses the recited “providing temporary lodging services in the nature of a tourist home”17 in the ’681 Reg., “rental” being defined as “an act renting”18 and “lodging being defined as: (1) “a place that you pay to live in temporarily”19; and (2) “a room or rooms rented in a private home.”20 In addition, Opposer’s broadly worded “banking and financing services,” as recited in the ’886 and ’887 applications, encompass Applicant’s more specifically identified financial advisory, analysis, consultancy, and information services. Where services are broadly identified in an application or registration, “we must presume that [those] services encompass all services of the type identified.” Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); see also In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018) (where the goods in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein). 17 lexico.com/en/definition/lodging, retrieved October 9, 2020. 18 www.merriam-webstercom, retrieved October 9, 2020. The Board may take judicial notice of dictionary definitions, including online dictionaries which exist in printed format. See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). 19 macmillandictionary.com, retrieved October 9, 2020. 20 yourdictionary.com/lodging, retrieved October 9, 2020. Opposition Nos. 91230955, 91230956 and 91236465 - 17 - We thus find the services are in-part legally identical. Opposer need not prove, and we need not find, similarity as to each and every activity listed in the description of services. It is sufficient for finding likelihood of confusion that relatedness is established for any activity listed in the identification of services in a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014). We find unavailing Applicant’s argument that the evidence of record must show “something more” than “that similar marks are used for adjacent products or services.” Applicant’s Br. p. 20.21 To the extent that Applicant is relying on In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003) for this assertion, such reliance is misplaced. In that case, the analysis under the second DuPont factor focused on the relationship between goods, i.e., beer, on the one hand and services, i.e., restaurant services, on the other. Cf. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1087 (Fed. Cir. 2014) (“Something more” is only required in the context of comparing goods versus services, not goods versus goods, and where the relationship between the goods and services is obscure or less evident). Such is not the case here where we are comparing two or more distinct and unambiguous services and not goods versus services. As stated, we are convinced, as specified above, that Applicant’s services are in-part legally identical or, as categorized by Applicant, overlap with those of Opposer. 21 35 TTABVUE 20. Opposition Nos. 91230955, 91230956 and 91236465 - 18 - This DuPont factor thus favors a finding of likelihood of confusion. B. Channels of Trade/Classes of Purchasers In addition, to the extent that Applicant’s identified services encompass or are encompassed by Opposer’s services, we may presume that the channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (identical goods [or services] are presumed to travel in same channels of trade to same class of purchasers) (cited in Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (“With respect to similarity of the established trade channels through which the goods [or services] reach customers, the TTAB properly followed our case law and ‘presume[d] that the identical goods move in the same channels of trade and are available to the same classes of customers for such goods... .’”); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods [or services], the channels of trade and classes of purchasers are considered to be the same. We accordingly find the presumed channels of trade and classes of consumers at a minimum to overlap. This DuPont factor concerning trade channels thus favors a finding of likelihood of confusion. C. Conditions of Purchase The fourth DuPont factor assesses the “conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567. Opposer maintains that the respective services are not restricted Opposition Nos. 91230955, 91230956 and 91236465 - 19 - to high-dollar investors or sophisticated consumers, and therefore could be offered to and used by anyone seeking to rent a home or apartment or tourist home, or to anyone who has money to invest or manage. Relying on the decision in Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (affirming that the Board properly considered all potential purchasers for the recited services, including both sophisticated and unsophisticated investors, since precedent requires consumer care for likelihood of confusion decisions be based “on the least sophisticated potential purchasers”), Opposer then argues that under the circumstances noted above, “given the required focus on the parties’ ‘least sophisticated potential purchasers,’ [the fourth DuPont] factor supports a likelihood of confusion.” Opposer’s Br. p. 19.22 While that may be so, given the nature of the respective services, we find that even the least sophisticated consumer of both Opposer’s and Applicant’s recited services will exercise some degree of care in selecting rental property and rental accommodations, at least with regard to location and occupancy. Similarly, consumers of the parties’ respective financial services will use a certain degree of care in their purchasing decisions. In making this finding, we recognize that even knowledgeable and careful purchasers can be confused as to source. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986). We thus find this factor to slightly favor Applicant. 22 34 TTABVUE 20. Opposition Nos. 91230955, 91230956 and 91236465 - 20 - D. Strength of Opposer’s ELEVEN Mark Opposer maintains that its ELEVEN marks are arbitrary in relation to the services described in its pleaded applications and registrations and are thus conceptually strong. Opposer’s Br. p. 20.23 Opposer also points to “evidence of extensive media coverage of services offered under the ELEVEN Marks.” Id.24 The strength of a mark rests on the extent to which “a significant portion of the relevant consuming public . . . recognizes the mark as a source indicator.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)). In determining the strength of a mark, we consider both inherent strength, based on the nature of the mark itself, and commercial strength or recognition. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”). 1. Conceptual Strength Opposer has made of record its pleaded registrations which are not subject to counterclaims. They are registered on the Principal Register without any disclaimers or claims of acquired distinctiveness (in whole or in part) and, as such, are entitled to 23 34 TTABVUE 21. 24 Id. Opposition Nos. 91230955, 91230956 and 91236465 - 21 - all presumptions under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), including the presumption that the marks are inherently distinctive. Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). Nonetheless, we may acknowledge the weakness of a registered mark in the course of a DuPont analysis. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517-18 (TTAB 2016). Applicant argues that: extensive registration and use of 11 or ELEVEN indicate that Applicant’s mark25 is weak, entitled to only a narrow scope of protection which does not encompass Applicant’s marks, and further that Opposer has routinely allowed registration of 11 or ELEVEN marks and cannot now complain of Applicant’s marks. Applicant’s br. p. 22.26 Here, Applicant introduced no evidence of third-party use. Instead, Applicant solely supported its position that the pleaded marks are entitled to a narrow scope of protection with copies of eleven third-party registrations for 11- and ELEVEN-formative marks.27 These registrations, except as excluded in footnote 29, issued to different entities and identify various real estate and financial services and are listed in the table below,: Marks Reg. No. Relevant Services 11 MIRRORS 5499995 Rental of real estate; real estate rental of apartments, offices, areas, rooms, houses, 25 We presume Applicant meant “Opposer’s mark.” 26 35 TTABVUE 23. 27 30 TTABVUE 47-131, Applicant’s NOR, Exhibit I. All of the registrations issued on the Principal Register, and some include additional goods and/or services. We have not considered Registration Nos. 5184180 and 5225642 because they registered pursuant to Section 44 of the Trademark Act and the registrants have not filed Section 8 affidavits. We also acknowledge that Registration Nos. 5595685 and 5232035 are owned by the same entity. Opposition Nos. 91230955, 91230956 and 91236465 - 22 - Marks Reg. No. Relevant Services land plots; and financial analysis SIX11 5729063 Real estate management services RENEW ONE ELEVEN 5842785 Leasing of apartments; Leasing of real estate; Management of apartments; Arranging of leases and rental agreements for real estate N-11 5814804 Financial services, namely, investment services 5595685 Venture capital services, namely, providing financing to emerging and start-up companies TENELEVEN 5232035 Venture capital services, namely, providing financing to emerging and start-up companies 4809737 Providing grants for charitable purposes in the fields of climate and energy and the boating and marine industries 11 on the 11th 4941114 Charitable fundraising services BONUS 11 (BONUS disclaimed) 4465173 Administration of annuities Because registrations are not evidence that the subject marks are in use in commerce, see In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016), they do not show that consumers have become so used to seeing these registered marks in the market place that they have learned to distinguish among them by minor differences. Id.; see also Sock It To Me, Inc., 202 USPQ2d 10611 at *9. Opposition Nos. 91230955, 91230956 and 91236465 - 23 - However, registrations may show that a term carries a descriptive or suggestive meaning. That is, similar to dictionary definitions, “third party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (quoting 2 McCarthy on Trademarks and Unfair Competition § 11:90 (4th ed. 2015)). Initially, we do not find the identified venture capital services, charitable fundraising and grant services and the administration of annuities services, identified in Registration Nos. 5595685, 5232035, 4809737, 4941114, and 4465173, to be included in Opposer’s broadly recited “banking and financing services” and Applicant introduced no evidence to show that they are a subset of or related to general banking and financing services. As such, they have little probative value in our analysis. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations for other types of goods where the proffering party had neither proven nor explained that they were related to the goods in the cited registration); In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (the third-party registrations are of limited probative value because the goods identified in the registrations appear to be in fields which are removed from the goods at issue). Opposition Nos. 91230955, 91230956 and 91236465 - 24 - The remaining four registrations, three covering services in the real estate field and one in the financial services field, are far too few to narrow the scope of protection of the pleaded registrations. Cf. Juice Generation, 115 USPQ2d at 1675, (involved approximately a dozen third-party registrations of the same phrase for restaurant services); Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (court stated the third-party evidence was “voluminous”). In view thereof, Applicant has not established any conceptual weakness in the word ELEVEN or its numerical equivalent, and therefore, we accord Opposer’s pleaded ELEVEN marks an ordinary scope of protection. 2. Commercial Strength We next analyze the commercial strength of Opposer’s marks. In the context of likelihood of confusion, such strength varies along a spectrum from very strong to very weak. Joseph Phelps v. Fairmont Holdings, 122 USPQ2d at 1734 (quoting Palm Bay v. Veuve Clicquot, 73 USPQ2d at 1694). It “may be measured indirectly by the volume of sales and advertising expenditures in connection with the [goods or services] sold under the mark, and other factors such as length of time of use of the mark; widespread critical assessments; notice by independent sources of the [goods or services] identified by the mark []; and the general reputation of the [goods or services].” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017); see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305-06 (Fed. Cir. 2002). Opposition Nos. 91230955, 91230956 and 91236465 - 25 - To demonstrate the commercial strength of its ELEVEN marks, Opposer primarily relies on magazine articles in which it purports “[t]he services provided by Licensees under the Eleven Marks have been featured.”28 The articles were published in Inside Hook, Robb Report, Maxim, Forbes, Men’s Journal, Modern Luxury, Bloomberg Pursuits, The Wall St. Journal, Outside Magazine, Active Junky, and The Los Angeles Times. In reviewing the articles, we observe that most also reference the two-word term “Eleven Experience.” In addition, Opposer did not provide circulation figures for any of the publications or numbers of impressions or unique hits for the web sites in which the presumably unsolicited media appeared. We are therefore at a disadvantage to ascertain the degree of exposure of Opposer’s mark, though we appreciate the wide-reaching circulation of, for example, The Wall Street Journal, Forbes and The Los Angeles Times. Under these circumstances, and because we find no conceptual weakness, we accord Opposer’s pleaded ELEVEN marks the normal degree of protection to which an inherently distinctive mark is entitled. Bell’s Brewery, Inc. v. Innovation Brewing Co., 125 USPQ2d 1340, 1347 (TTAB 2017). E. Similarity or Dissimilarity of the Marks We next consider the DuPont likelihood of confusion factor of the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay v. Veuve Clicquot, 73 USPQ2d at 1692 (citing DuPont, 177 USPQ at 567). In comparing the marks, we are mindful that where, as 28 27 TTABVUE 3, 7-20; Martin Decl. ¶ 2, Exhs. 9-19. Opposition Nos. 91230955, 91230956 and 91236465 - 26 - here, the services are legally identical in part, 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. Coach Servs., 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). “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., 101 USPQ2d at 1721. See also San Fernando Electric Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). We first compare Applicant’s stylized , , and marks with Opposer’s mark, described as “consist[ing] of a stylized number 11 within a diamond shape.” Opposer maintains that “the literal element ‘11’ of Applicant’s marks is identical to the literal element ‘11’ of Opposer’s stylized mark,” Opposer’s Opposition Nos. 91230955, 91230956 and 91236465 - 27 - Opening Br. p. 16,29 and therefore the parties’ marks are similar. Although it is confirmed by the description of Opposer’s mark that Opposer intends that its design mark include the number 11, we do not readily discern that number and find it unlikely that Opposer’s prospective consumers would. Cf. In re Change Wind Corp., 123 USPQ2d 1453, 1459 n.6 (TTAB 2017) (“the drawing of the mark, not the words an application [or registration] uses to describe it, controls what the mark is”). Instead, it is likely that prospective consumers would perceive Opposer’s mark as comprising various geometric shapes. We accordingly find no similarity in appearance, sound, connotation and commercial impression between the Applicant’s marks and Opposer’s mark. We turn now to a comparison of Applicant’s marks with Opposer’s pleaded standard character ELEVEN mark. Opposer maintains that the differences between the parties’ marks are insufficient to avoid a likelihood of confusion, particularly arguing that: the literal element “11” of Applicant’s Marks, on one hand, and Opposer’s ELEVEN word marks, on the other, are identical in terms of sound, connotation and commercial impression, and their visual differences are illusory (and should indeed be deemed similarities) given that English- speaking consumers will correctly identify and equate the number “11” with the word “eleven.” Opposer’s Opening Br. p. 16.30 Applicant conversely argues that the parties’ marks are not confusingly similar when viewed in their entireties. 29 34 TTABVUE 17. 30 Id. Opposition Nos. 91230955, 91230956 and 91236465 - 28 - In considering Applicant’s marks, we do not find, as Opposer suggests, that they are dominated by the number “11.” Rather, on comparison of the marks in their entireties, we find them markedly different in appearance. All three of Applicant’s marks contain or consists of the three character term K11, comprising the single letter “K” and the numeral “11.” Although Opposer’s ELEVEN mark is the literal equivalent of the numerical part of Applicant’s mark, when the marks are compared in their entireties, they are obviously different in appearance. Unlike the marks Applicant seeks to register, Opposer’s mark does not begin with letter “K” or the word ATELIER. Instead, Opposer’s ELEVEN mark consists of a six-letter word beginning with the letter “E” and ending with the letter “N.” In addition, all three of Applicant’s marks include some stylization. While the stylization is slight and, in itself, does not distinguish Applicant’s marks from Opposer’s mark, it provides a point of difference between the marks, as least with regard to the numerical component of Applicant’s marks. That Opposer’s ELEVEN mark is in standard characters does not alter this finding. While Opposer is correct that it is entitled to display its mark in the same font, size and color, see Viterra, 101 USPQ2d at 1909-10, as acknowledged by Opposer, the stylization is not so extreme or unique as to be distinguishing, and Opposer is not entitled to display its ELEVEN mark as its numerical equivalent, as the difference in form is not a font, size or color. See id. (The court also recognized that a standard character mark may not encompass all possible design elements.). The addition of the visually prominent word ATELIER to Applicant’s mark further distinguishes that mark in appearance from Opposer’s ELEVEN mark. We note, too, that the Opposition Nos. 91230955, 91230956 and 91236465 - 29 - differing elements in Applicant’s marks are positioned as the first parts of those marks. Consumers in general are inclined to focus on the first word or portion in a trademark. Presto Products, Inc. v. Nice-Pak Prodts., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is likely to be impressed upon the mind of a purchaser and remembered”); see also Palm Bay v. Veuve Clicquot, 73 USPQ2d at 1692. Similarly, the marks are obviously different in sound. Applicant’s marks contain additional distinctive elements that are not present in Opposer’s mark. In terms of meaning or connotation, Applicant maintains that the parties’ marks “differ vastly in meaning,” because, unlike Opposer’s ELEVEN mark, its marks “feature the dominant K11 element, which … evokes Applicant’s mission of an art mall” as conceived by its founder. Applicant’s Br. p. 19.31 While that may be Applicant’s intended meaning, the record does not establish that such a meaning is appreciated by Applicant’s prospective or current consumers. Indeed, there is no evidence that K11 has any recognized meaning in connection with Applicant’s identified services. In addition, even if, as Opposer argues, the word ATELIER imparts the meaning of “an artist studio” to Applicant’s mark,32 that meaning, like the word, is absent from Opposer’s mark. The record is also devoid of evidence that Opposer’s ELEVEN mark has any particular meaning in connection with Opposer’s recited services. Thus, given the differences in the marks, consumers 31 35 TTABVUE 20. 32 34 TTABVUE 19; Opposer’s Opening br. p. 18. Opposition Nos. 91230955, 91230956 and 91236465 - 30 - are likely to attribute different, primarily arbitrary meanings to the parties’ respective marks notwithstanding the in-part identical services. For the reasons discussed, when the parties’ respective marks are viewed in their entireties, we find the differences in appearance, sound and connotation between them to result in marks that engender distinctly different commercial impressions. The DuPont factor of dissimilarity of the marks thus favors a finding of no likelihood of confusion. Lastly, both Opposer and Applicant rely on a number of prior decisions to bolster their positions with regard to a finding, or not, of likelihood of confusion in this case. While our decision is made within the confines of established statutes, rules and case precedent, it is axiomatic that each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [Applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”); and In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). We are therefore obligated to and have assessed the registrability of Applicant’s marks on their own merits and have carefully considered the arguments and evidence of record in this case. F. Analyzing the Factors After considering all of the arguments and evidence of record, and all relevant DuPont factors pertaining to the issue of likelihood of confusion, we conclude that confusion is not likely between Applicant’s , , and marks and Opposition Nos. 91230955, 91230956 and 91236465 - 31 - Opposer’s ELEVEN and marks. Despite our finding that Applicant’s and Opposer’s services are in-part legally identical and that those legally identical services are presumed to move in identical trade channels and would be offered to the same classes of purchasers, we further find that consumers of both Applicant’s and Registrant’s recited services will exercise an elevated degree of care in their purchasing decisions, and the marks at issue are too dissimilar overall to warrant a finding of likelihood of confusion. Indeed, the first DuPont factor is dispositive in this case. See Kellogg Co. v. Pack’em Enters., Inc., 951 F.2d. 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case, a single du Pont factor may not be dispositive. ... ‘each [of the thirteen factors] may from case to case play a dominant role.’”). Because the marks are sufficiently different in appearance and sound, and there is no reliable evidence showing that they have the same meaning or connotation, we find that the relevant consumers are not likely to assume that a source connection exists between the services provided under Applicant’s and Opposer’s respective marks. Decision: Opposition Nos. 91230955, 91230956 and 91236465 are dismissed.