Encompass Group, LLC

Trademark Trial and Appeal BoardSep 12, 2016

No. 86459079 (T.T.A.B. Sep. 12, 2016)

This Opinion is not a Precedent of the TTAB Mailed: September 12, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Encompass Group, LLC _____ Serial No. 86459079 Dorian B. Kennedy of Baker Donelson Bearman Caldwell & Berkowitz, PC for Encompass Group, LLC. Zachary Bello, Trademark Examining Attorney, Law Office 111, Robert L. Lorenzo, Managing Attorney. _____ Before Zervas, Shaw, and Gorowitz Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Encompass Group, LLC (“Applicant”) seeks registration on the Principal Register of the standard character mark EVOLUTION for “Medical apparel in the nature of scrub tops, scrub pants, scrub caps for use in medical examination and treatment; Medical treatment apparel; Patient examination gowns, in International Class 10.1 1 Application Serial No. 86459079 was filed on November 19, 2014 under Section 1(a) of the Trademark Act, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as May 10, 2010. Serial No. 86459079 - 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 so resembles the registered mark EVOLUTION ONE (in standard characters) for “disposable gloves for medical use,” in International Class 102 as to be likely to cause confusion, mistake or deception. After the Trademark Examining Attorney made the refusal final, Applicant appealed and filed a request for reconsideration. When the request for reconsideration was denied, the appeal was instituted. We affirm the refusal to register. I. Evidentiary issue. Before proceeding to the merits of the refusal, we address an evidentiary matter. Applicant submitted as evidence with its reply brief, copies of a number of registrations marked Exhibit “B.” These registrations were not previously introduced.3 Evidence submitted after an appeal is untimely and will not ordinarily be considered. Trademark Rule 2.142(d); 37 CFR § 2.142(d). Therefore we have not considered the documents marked Exhibit “B”. 2 Registration No. 1988550, issued on July 23, 1996; renewed. 3 One of the registrations in Exhibit “B” was Registration No. 4705158, which was discussed in Applicant’s appeal brief. The Examining Attorney objected to Applicant’s reliance on this registration inasmuch as it had not been made of record. The submission of this registration with the reply brief does not cure this defect and the registration has not been considered. Serial No. 86459079 - 3 - II. Likelihood of confusion. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In this case, Applicant and/or the Examining Attorney also discussed the following du Pont factors: the number of third party registrations for similar marks, the channels of trade and the sophistication of the purchasers. A. Similarities or dissimilarities of the marks. We start our analysis with a determination of the similarity of the marks. The marks at issue are EVOLUTION and EVOLUTION ONE. In comparing the marks we must consider the appearance, sound, connotation and commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). While “the similarity or dissimilarity of the marks is determined based on the marks in their entireties … 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.” In Serial No. 86459079 - 4 - re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The first word in a mark is frequently the most dominant portion of a mark since it is the most likely to be impressed upon the mind of the purchaser and to later be remembered. See Palm Bay Imports, 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). See also In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (finding JOSE GASPAR GOLD “nearly identical” to GASPAR ALE once the commercial significance of the descriptive and otherwise non-dominant terms JOSE, GOLD and ALE are properly discounted). Applicant adopted the first word of the cited mark EVOLUTION ONE, which is the dominant part of that mark. The record does not reflect that the word EVOLUTION has any particular meaning in connection with medical apparel, thus it is an arbitrary term. As such, it is an inherently strong term for the subject goods. In addition, the commercial impression of the marks is the same, because the term ONE does not provide any particular meaning to the term See Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (In considering the similarity of the marks STONE LION CAPITAL and LION Serial No. 86459079 - 5 - CAPITAL, the Board “reasoned that ‘LION’ was ‘dominant’ in both parties’ marks … [and the Board correctly accorded] little weight to the adjective ‘STONE’ on the ground that it did not ‘distinguish the marks in the context of the parties’ services.”). We find that the marks are highly similar and that the first du Pont factor favors a finding of likelihood of confusion. B. Similarity or dissimilarity of goods and channels of trade. Next, we look at the similarity of the goods and the channels of trade, beginning with the similarity between the goods. When determining the similarity of the goods, [i]t is well settled that the issue of likelihood of confusion between applied-for and registered marks must be determined on the basis of the goods as they are identified in the involved application and cited registration, rather than on what any evidence may show as to the actual nature of the goods, their channels of trade and/or classes of purchasers. In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). See also Stone Lion Capital Partners, 110 USPQ2d at 1161-62 (Fed. Cir. 2014). Applicant’s goods are identified as “medical apparel in the nature of scrub tops, scrub pants, scrub caps for use in medical examination and treatment; medical treatment apparel; and patient examination gowns.” The goods in the cited registration are identified as “disposable gloves for medical use.” The goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that Serial No. 86459079 - 6 - they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722, quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007). The Examining Attorney has submitted website evidence establishing that both “disposable gloves for medical use” and “Disposable Medical Clothing and Apparel” are sold by the same companies on the same webpages. See for example, Quick Medical (www.quickmedical.com/medicalwear) sells “Disposable Medical Clothing and Apparel” -Exhibit to Office Action dated July 9, 2015, TSDR pp. 7-8; Total Pharmacy Supply (www.totalphamacysupply.com /browse.cfm/apparel/) sells lab coats, scrubs, protective apparel and gloves, Exhibit to Denial of Request for Reconsideration, TSDR p. 15. Serial No. 86459079 - 7 - • Mercedes Medical (www.mercedesmedical.com/ products/HISTOLOGY/GLOVES-APPAREL.Aspx) sells disposable gloves, disposable lab coats, face shields and masks, Exhibit to Denial of Request for Reconsideration, TSDR p. 19. Applicant does not contend that Applicant’s goods and the goods in the cited registration are not related. To the contrary, Applicant classifies both types of goods as “medically related items.” Appeal Brief, 8 TTABVUE 6. Applicant’s goods and the goods in the cited registration are not merely “medically related items.” Medical apparel and disposable gloves for medical use are complementary products that are used together for protection. The disposable gloves may also be considered medical apparel or medical treatment apparel. The Examining Attorney has also established these goods are also sold in the same channels of trade, i.e., through on-line medical and pharmacy supply stores and medical apparel stores. Serial No. 86459079 - 8 - Accordingly, we find that the goods are related and that they are sold through the same channels of trade. Thus, the second and third du Pont factors favor a finding of likelihood of confusion. C. The number and nature of similar marks in use on similar goods. Applicant contends that its mark is not confusingly similar to the cited mark EVOLUTION ONE because “the term ‘evolution’ here is weak, as the term ‘evolution’ is commonly associated with medical goods.” Id., at p. 4. To support its position, Applicant relies on twelve registrations owned by ten different parties for goods in the “medical device industry.” We agree that these registrations may be evidence of weakness of the term “EVOLUTION” in the medical device industry. See Juice Generation, Inc. v. GS Enters. LLC, 740 F.3d 1334, 115 USPQ 2d 1671, 1675 (Fed Cir. 2015) (record of 25 registered or unregistered marks in the food service industry that included the phrase “PEACE LOVE” evidenced that the phrase was weak). However, neither Applicant’s nor Registrant’s goods are medical devices. They are medical apparel. Moreover, the cited registration is the only registration of record for medical apparel. Accordingly, there is no evidence we may rely on to support a finding that the mark is weak. However, our determination would not change if we had found the mark to be weak because even a weak mark is entitled to protection against the registration of a similar mark for closely related goods or services. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). We find that the twelve registrations for medical devices submitted by Applicant are not sufficient to establish the mark EVOLUTION ONE for disposable gloves for Serial No. 86459079 - 9 - medical use is so weak that there is no likelihood of confusion between it and Applicant’ mark EVOLUTION for medical apparel. As such, the sixth du Pont factor is neutral. D. Sophistication of purchasers. Applicant argues that “consumers of scrubs and consumers of medical gloves are sophisticated purchasers. Appeal Brief, 8 TTABVUE 7 (emphasis in original). There is no evidence that medical apparel, such as scrubs and disposable gloves are purchased by sophisticated purchasers. However, even if the purchasers are sophisticated, the fact that “the relevant class of purchasers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar marks for similar services. Human memories even of discriminating purchasers are not infallible.” In re Research and Trading Corp., 793 F2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (internal citation omitted). E. Conclusion. After considering all the evidence and argument on the relevant du Pont factors regarding likelihood of confusion between Applicant’s mark EVOLUTION (in standard characters) for “medical apparel in the nature of scrub tops, scrub pants, scrub caps for use in medical examination and treatment; medical treatment apparel; and patient examination gowns” and the cited mark EVOLUTION ONE (in standard characters) for “disposable gloves for medical use,” we find that there is a likelihood of confusion. Serial No. 86459079 - 10 - Decision: The refusal to register Applicant’s mark EVOLUTION is affirmed.