Encased Products

Trademark Trial and Appeal BoardJun 8, 2016

No. 86546430 (T.T.A.B. Jun. 8, 2016)

This Opinion is not a Precedent of the TTAB Mailed: June 8, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Encased Products _____ Serial No. 86546430 _____ Luke Brean of Breanlaw LLC, for Encased Products. Marilyn D. Izzi, Trademark Examining Attorney, Law Office 112, Renee Servance, Acting Managing Attorney. _____ Before Wellington, Shaw, and Lynch, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Encased Products (“Applicant”), a New York corporation, seeks registration on the Principal Register of the mark FITBUDS (in standard characters) for “earphone accessories, namely, earphone cushions, earphone pads, cord management systems, earphone cases, and earphone extension cords; earphones; headphones; portable media players” in International Class 9.1 1 Application Serial No. 86546430 was filed on February 26, 2015, under Section 1(b) of the Trademark Act, based on an intent to use the proposed mark in commerce. Serial No. 86546430 - 2 - The Trademark Examining Attorney 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 in connection with the identified goods, so resembles the registered standard character mark BUDFITS (Reg. No. 3900564) for “earphones and headphones” in International Class 9,2 that it is likely to cause confusion. When the refusal was made final, Applicant appealed. The Examining Attorney and Applicant have filed briefs. For the following reasons, we affirm the refusal. Likelihood of Confusion Our likelihood of confusion determination is based on 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., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). Similarity of the Goods/ Channels of Trade/ Consumers With regard to the goods, channels of trade and classes of consumers, it is well- established that we must make our determination based on the goods as they are identified in the cited registrations and involved application. See In re Dixie 2 Issued on January 4, 2011. Serial No. 86546430 - 3 - Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Here, the goods are identical in part because “earphones” and “headphones” are listed in the registration and the application. The remaining goods in the application, “earphone cushions, earphone pads, cord management systems, earphone cases, and earphone extension cords,” are obviously closely related as they are expressly described as “earphone accessories.” With respect to Applicant’s “portable media players,” these too are closely-related to Registrant’s earphones and headphones since they are used together. Moreover, if likelihood of confusion exists with respect to any of Applicant’s identified goods in a particular class, the refusal of registration must be affirmed as to all goods in that class. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In sum, Applicant’s “earphones” and “headphones” are identical to Registrant’s goods and the remaining goods identified in the application are closely related. Indeed, Applicant does not dispute the identity of the goods. In circumstances such as these, where an applicant’s goods are identical to those of a registrant and there are no limitations set forth in the identifications, we must presume that the channels of trade and classes of purchasers for these identical goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. Serial No. 86546430 - 4 - 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). Given the ubiquity of headphones and earphones being used with mobile phones and portable music devices, the general public would be one class of consumers. Similarity of the Marks We now consider whether Applicant’s mark, FITBUDS, is similar to the registered mark, BUDFITS, and compare them “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). In making our determination we focus on the recollection of the average purchaser, who normally retains a general rather than specific impression of the trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 73 USPQ2d at 1695 (“[G]eneral consumers, not just connoisseurs, occasionally purchase champagne or sparkling wines on celebratory occasions, with little care or prior knowledge”). We also keep in mind that “[w]hen marks would appear on virtually identical goods or services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v. Century Serial No. 86546430 - 5 - Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994). See also ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980). Here, the obvious similarity is that both marks are composed of the terms BUD and FIT, and both marks ending with the letter S. The sole difference is the terms are reversed in order. Where the primary difference between marks is the transposition of the elements that compose the marks, and where this transposition does not change the overall commercial impression, the Board has often found a likelihood of confusion. See, e.g., In re Wine Soc'y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials, and AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals, likely to cause confusion); In re Nationwide Indus., Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER (with “RUST” disclaimed) for rust-penetrating spray lubricant, and BUST RUST for penetrating oil, likely to cause confusion); In re Gen. Tire & Rubber Co., 213 USPQ 870, 871 (TTAB 1982) (holding SPRINT STEEL RADIAL (with “STEEL” and “RADIAL” disclaimed) for pneumatic tires, and RADIAL SPRINT (with “RADIAL” disclaimed) for radial tires, likely to cause confusion). However, if the transposed mark creates a distinctly different commercial impression, then confusion is not likely. See, e.g., In re Best Prods. Co., 231 USPQ 988, 989-90 (TTAB 1986) (holding BEST JEWELRY and design (with “JEWELRY” Serial No. 86546430 - 6 - disclaimed) for retail jewelry store services, and JEWELERS' BEST for bracelets, not likely to cause confusion). As to the meaning and commercial impressions of the marks, neither Applicant nor the Examining Attorney introduced definitions for the component terms. However, both assert that “bud” may be understood, in the context of headphones and earphones, as an abbreviated reference to earbud-style earphones or headphones.3 Applicant further asserts that “bud” also may be understood in both marks as meaning “friend” or “buddy.” With regard to the term “fit,” both Applicant and the Examining attorney acknowledge that it may be understood as suggestive of physical activities or exercise and being in shape.4 However, Applicant argues that, as found in Registrant’s mark, “fits” would not be understood as a fitness reference and instead “gives the impression of a superior product that fits snugly and comfortably on the user’s head or in the user’s ear.”5 Thus, despite their almost identical components, Applicant argues the overall commercial impressions of the two marks differs based on the reversed placement of the component terms. Specifically, Applicant asserts that the “overall impression of Applicant’s mark [FITBUDS] is … of a product that can be a partner in achieving physical fitness,” whereas Registrant’s mark, BUDFITS, “immediately emphasizes 3 See 4 TTABVUE 8 Applicant’s brief at p. 7 (“buds” is a “shortened term for ear bud headphones”) and 6 TTABVUE 7, Examining Attorney’s brief at unnumbered p. 6 (“BUD can be viewed as a shortening of ‘earbuds,’ a common term for earphones”). 4 Id., Applicant’s brief (“may be used during exercise or while getting fit”) and Examining Attorney’s brief (“FIT can be viewed as referring to physical fitness”). 5 4 TTABVUE 8. Serial No. 86546430 - 7 - BUD, connoting friendship or familiarity” and FITS “will likely be read by consumers as a conjugation of the verb ‘to fit’ … giv[ing] the impression of a superior product that fits snugly and comfortably on the user’s head or in the user’s ear.”6 The Examining Attorney counters that a physical fitness connotation is not unique to Applicant’s mark. She asserts that “Registrant markets its goods for use during physical fitness activities … [and] both marks create the idea of earbuds used during physical fitness activities.”7 In support, she submitted the following printout from Registrant’s website:8 6 Id. 7 6 TTABVUE 7. 8 Submitted with Office action issued on July 9, 2015. Serial No. 86546430 - 8 - In this case, and regardless of the reversed order of the same component terms, we find that the two marks, FITBUDS and BUDFITS, convey the same or very similar meanings in the context of the earphones or headphones. Both marks will likely be perceived by consumers as suggestive of earbud-style headphones that “fit” well to ears. The ability of the earphones or headphones to fit properly is certainly a concern for consumers since, as Applicant explained, “ear bud style headphones are often ill-fitting or loose.”9 Consumers, upon viewing either mark on or in connection with earphones or headphones, would welcome the suggestion that the goods fit well and will not fall off or out of the user’s ear. Applicant’s argument that the nearly identical constituent words would be perceived so differently in the two marks is unconvincing. While we agree with the possibility that consumers will perceive Applicant’s mark, FITBUDS, as suggestive of earbud-style headphones intended for fitness activities, that same meaning may be found in Registrant’s mark, BUDFITS. Because of the identity of the goods, which would include earbud-style headphones that are designed and advertised for wearing during sports activities, consumers may be susceptible to the presence of a fitness 9 4 TTABVUE 8. Serial No. 86546430 - 9 - connotation in both marks. Indeed, as shown above, Registrant touts its goods as being suitable for fitness activities on its website, e.g., “let your music rock you through extreme sports and intense workouts” (highlighted in blue lettering) and “I have given them a good workout by using them while running, working out, …” (customer testimonial). Thus, to the extent Applicant’s mark has a double entendre, the cited mark shares the same two alternative meanings. As to sound and appearance, we further find the marks more similar than not due to the fact that it will be the two same, short words being spoken and viewed, albeit in reverse order. In sum, viewed in their entireties, the marks remain very similar in terms of commercial impression, connotations, appearance and sound. Applicant’s mere transposition of the same two component terms in Registrant’s mark does very little to distinguish the two marks. Conclusion Based on the similarity of the marks, as well as the in-part identity of the goods, and their travel in the same trade channels to the same class of purchasers, we find confusion likely. Decision: The refusal to register under Section 2(d) is affirmed. The application will be abandoned in due course.