Favorit Czechoslovakia s.r.o.

Trademark Trial and Appeal Board

Apr 22, 2016

No. 79133133 (T.T.A.B. Apr. 22, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: April 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Favorit Czechoslovakia s.r.o.
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Serial No. 79133133
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John Alumit of Alumit IP,
for Favorit Czechoslovakia s.r.o.
Katherine Stoides, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Wellington, Shaw and Kuczma,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Favorit Czechoslovakia s.r.o. (“Applicant”) seeks registration on the Principal
Register of the stylized mark

for:
bicycles, namely road bikes, mountain bikes, cross bikes,
trekking bikes, racing bikes, sports bikes, freestyle bikes,
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children’s bikes, and construction bikes; bicycle parts,
namely frames, wheels, forks, handlebars, mudguards,
saddles, seat posts, chains, gears, pedals, and rims for
bicycle wheels; luggage nets for vehicles; handlebar
attachments, namely bicycle mirrors, brakes, and bells;
bicycle cranks, tyres, casings for pneumatic tires, inner
tubes for bicycles, tubeless tyres for bicycles; repair
equipment for inner tubes, namely, tire repair patches,
adhesive rubber patches for repairing inner tubes, baskets
adapted for bicycles, water bottle holders for bicycles,
stands for bicycles, bicycle racks for vehicles, in
International Class 12;
clothing, namely, shirts, pants, skirts; footwear; headgear,
namely, hats and caps; clothing for cycling and cyclo-
tourism, namely cycling trousers and shorts, t-shirts,
jerseys, jackets, hats and scarves, cycling gloves, cycling
raincoats, cycling shoes; clothing for skiing, namely, ski
jackets and ski trousers; men’s, women’s and children’s
clothing, namely, blouses, dresses, suits, trousers, skirts,
jackets, shirts, vests, coats, overcoats, raincoats,
turtlenecks, sweaters, pullovers; bathing suits; shorts, t-
shirts, sweatpants, track suits, sweatshirts; windproof
clothing, namely, wind coats, wind jackets; sports jackets;
men’s, women’s and children’s underwear, namely, night
wear, pyjamas, dressing gowns, overalls, bodies, namely
lingerie, men´s briefs, pants, boxer shorts, petticoats,
panties, bras, brassieres, bustiers, corsets, garters,
undershirts, singlets, chemises, slips, cotton and elastic t-
shirts, leggings, knit leggings, socks, hosiery, tights; denim
clothing, namely, denim jackets, denim pants; leather wear
clothing, namely, leather jackets, leather pants; ties,
neckties, bow ties, scarves, shawls, gloves, mittens, hats,
caps, headbands, berets, visors, swimming caps, men’s,
women’s and children’s footwear, namely, home footwear,
sports footwear, tennis shoes, high boots, wellington boots,
moccasins, low shoes, slippers, loafers, mules, carpet
slippers, sandals, ski footwear, snowboarding footwear,
waterproof clothing, namely, wet suits, in International
Class 25; and
playing cards; stationary exercise bicycles; sports training
apparatus, namely portable stationary cycles and spring
hand grips for bicycles; toy scooters; manually-operated
exercise equipment for physical fitness purposes; body
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building apparatus, body training apparatus, sports
training apparatus, namely pitching machines, in
International Class 28.1
The description of the mark states: “The mark consists of the wording ‘FAVORIT’ in
stylized font.” Color is not claimed as a feature of the mark.
Registration as to International Classes 12 and 28 has been refused under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark,
when used on the identified goods, so resembles the mark FAVORITES, in standard
characters for “mail order catalogs featuring jewelry, hardware, sporting goods, toys
and games, food and home furnishings, namely, furniture, appliances, housewares,
home accessories, domestics, textile goods, electrical appliances, and electronics,” in
International Class 16, as to be likely to cause confusion, mistake or deception.2
When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration, and
the appeal was resumed. We reverse the refusal to register.
Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence 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

1 Application Serial No. 79133133, based on International Reg. No. 1168046, issued
January 17, 2013.
2 Registration No. 2661941, issued December 17, 2002; renewed.
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the goods and the similarities between the marks. See 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.”). The du Pont factors about
which there is evidence or argument are the similarity of the marks, the similarity of
the goods, and the number and nature of similar marks in use in connection with
similar goods.
A. The similarity or dissimilarity of the marks in their entireties in terms
of appearance, sound, connotation and commercial impression

First, we consider the similarity of the marks. In comparing the marks we must
consider their appearance, sound, connotation and commercial impression. Palm Bay
Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). The emphasis of our analysis must be on the
recollection of the average purchaser who normally retains a general, rather than
specific, impression of trademarks. Although we consider the mark as a whole, “in
articulating reasons for reaching a conclusion on the issue of confusion, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark. . . .” In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
The Examining Attorney first argues that the marks are “essentially phonetic
equivalents and thus sound similar.”3 We agree. In terms of sound, both marks

3 Examining Attorney’s Br. at 7.
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consist primarily of the word “favorite” with Applicant’s mark dropping the letter “e”
and the cited mark appearing in plural form. The slight change in spelling to drop
the letter “e” does not affect the pronunciation of Applicant’s mark, nor does Applicant
argue otherwise. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed.
Cir. 2012) (finding XCEED and X-SEED pronounced similarly); Kabushiki Kaisha
Hattori Seiko v. Satellite Int’l Ltd., 29 USPQ2d 1317, 1318-19 (TTAB 1991) (holding
phonetically identical marks SAKO and SEIKO confusingly similar despite different
spellings). Similarly, the fact that Registrant’s mark is in plural form does not create
a significant difference in pronunciation of the marks. It is well established that
marks consisting of the singular and plural forms of the same term are essentially
the same mark. See Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347,
1355 (TTAB 2014) (citing Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341
(CCPA 1957) (Marks “consisting of the singular and plural forms of the same term
are essentially the same mark.”).
In appearance, the cited mark is depicted in standard characters and, therefore,
may appear in any typeface including one similar to Applicant’s. See Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir.
2011) (“[T]he registrant is entitled to depictions of the standard character mark
regardless of font style, size, or color.”). In connotation and commercial impression,
both marks convey the same commercial impression of one or more “favorite” things.
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In sum, when we consider the marks in their entireties, we find them to be similar
in terms of appearance, sound, connotation and commercial impression. This du Pont
factor weighs in favor of a finding of a likelihood of confusion.
B. Similar marks in use in the marketplace

As part of a du Pont analysis, we must consider “[t]he number and nature of
similar marks in use on similar goods.” Du Pont, 177 USPQ at 567. Applicant
contends that “FAVORITES is a terribly weak mark” because of third-party use of
the term in the marketplace and argues that the cited mark is therefore entitled to a
narrow scope of protection.4 Applicant made of record twenty third-party
registrations and websites showing registration and use of the terms “favorite” or
“favorites” in connection with sporting goods, toys, games, and retail stores selling
toys or bicycles. The evidence includes:5
• Registration No. 3144691 for the mark TOUR FAVORITES for “toys,
games and playthings, namely, toy vehicles and accessories therefor;”
• Registration No. 4471578 for the mark FAIRYTALE FAVORITES for
“dolls, doll clothing and doll accessories”;
• Registration No. 4402285 for the mark SUKI SHUFU (stylized), which
translates to “favorite housewife” for “sporting goods, namely, bottle
insulators in the nature of insulating sleeve holders for bottles” and yoga
mats and accessories;
• Registration No. 4306663 for the mark FUN FAVORITES for “dolls, doll
clothing and doll accessories;”
• Registration No. 3080992 for the mark AMERICA'S FAVORITE
TACKLEBOXES for “fishing tackle organizers, namely, fishing tackle
containers;”

4 Applicant’s Br. at 6.
5 Applicant’s Response of February 7, 2014. (Emphasis added). We have not considered web
site excerpts which appear to be from foreign countries.
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• Registration No. 3084586 for the mark FAN FAVORITES for “toys, games
and playthings, namely, toy vehicles and accessories therefor;”
• Registration No. 3904907 for the mark MY FAVORITE PLAYHOUSE for
a “cardboard playhouse;”
• Registration No. 3775904 for the mark MY FAVORITE COUPLE for
“toys, games and playthings, namely, dolls, doll clothing and doll
accessories;”
• Registration No. 3807850 for the mark FAVORITE CLASS for “toys,
games and playthings, namely, dolls, doll clothing and doll accessories;”
• Registration No. 3671930 for the mark AMERICAN FAVORITES for
“toys, games and playthings, namely, dolls, doll clothing and doll
accessories;”
• Myfavoritetoys.com – A printout from a web site offering toys trains; and
• Allprobikes.com – A printout from the web site of a Simi Valley bicycle shop
which bills itself as “Simi Valley’s Favorite Bike Shop.”

The Federal Circuit has stated that “evidence of third-party use of similar marks
on similar goods ‘can show that customers have been educated to distinguish between
different marks on the basis of minute distinctions.’” Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136 (Fed. Cir. 2015), quoting Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Such evidence is
“powerful on its face, even where the specific extent and impact of the usage has not
been established.” Jack Wolfskin, 116 USPQ2d at 1136 (internal quotes omitted).
We find the evidence of third-party use to be sufficient to show that the term
FAVORITE is weak as a source indicator for sporting goods and toys. That is, the
word “favorite” may be considered laudatory, and therefore conceptually weak,
inasmuch as “favorite’ is defined as “a person or a thing that is liked more than
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others.”6 See also, In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (holding
AMERICA’S FAVORITE POPCORN! consists of merely laudatory words for
unpopped popcorn). Accordingly, we agree with Applicant that the cited mark is
entitled to a “comparatively narrower range of protection.” Juice Generation, 115
USPQ2d at 1674. This du Pont factor weighs against a finding of a likelihood of
confusion.
C. The similarity of the goods and channels of trade

We next consider the similarity of the respective goods and the channels of trade.
It is not necessary that the goods be identical or competitive, or even that they move
in the same channels of trade, to support a finding of likelihood of confusion. Rather,
it is sufficient that the goods are related in some manner, or that the circumstances
surrounding their marketing are such that they would or could be encountered by the
same persons in situations that would give rise, because of the similarity of the
marks, to a mistaken belief that they originate from the same source or that there is
an association or connection between the sources of the goods. Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); In
re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
Furthermore, it is the Examining Attorney’s burden to establish that the involved
goods are related to support a finding of likelihood of confusion. See, e.g., In re White

6 Http://www.merriam-webster.com/dictionary/favorite. The Board may take judicial notice
of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213
USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including online dictionaries that exist in printed format or have regular fixed editions.
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Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding the Office had
failed to establish that wine and vodka infused with caffeine are related goods).
Evidence of relatedness may include news articles and/or evidence from computer
databases showing that the relevant goods are used together or used by the same
purchasers; advertisements showing that the relevant goods are advertised together
or sold by the same manufacturer or dealer; and/or copies of prior use-based third-
party registrations of marks listing both goods of the type identified in the Applicant’s
application and the cited registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817
(TTAB 2014).
Applicant’s identification of goods recites a long list of bicycles, bicycle parts,
games, toys, and cycling-related sporting goods. The cited registration recites “mail
order catalogs featuring jewelry, hardware, sporting goods, toys and games, food and
home furnishings, namely, furniture, appliances, housewares, home accessories,
domestics, textile goods, electrical appliances, and electronics.”
The Examining Attorney argues that mail order catalogs and goods featured
therein are of a kind that may emanate from a single source under a single mark.7 To
support the refusal, the Examining Attorney introduced ten third-party registrations
purporting to show the relatedness of Applicant’s goods and the goods in the cited
registration.8 However, none of the third-party registrations show use of the same
mark on mail order catalogs and cycling-related sporting goods or on toys and games.

7 Examining Attorney’s Br. at 7.
8 Examining Attorney’s Office Action of January 21, 2015.
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In three of the registrations, namely Registration Nos. 3147726, 3029205, and
3212783, the catalogs in class 16 have been deleted from the registration. In six of
the registrations, namely Registration Nos. 3528600, 3592894, 2782042, 2964985,
32521432, and 4315904, the registration does not include any goods in Applicant’s
classes: 12 and 28. Only one registration, namely Registration No. 3029206, includes
both catalogs and sporting goods, but the sporting goods are all related to the game
of golf, not cycling. In sum, the third-party registrations fail to show any connection
between Applicant’s goods and the goods in the cited registration.
Regarding channels of trade, the Examining Attorney argues that Applicant’s
goods fall within the broad wording “sporting goods” or “toys and games” in the cited
registration and “are therefore closely related and are presumed to travel in the same
channels of trade.”9 We disagree. Although some of the goods identified in
Registrant’s mail order catalogs encompass items in the application, we cannot
assume that the channels of trade for Applicant’s cycling-related goods, toys, and
games are the same as Registrant’s catalogs. The goods in the cited registration are
mail order catalogs, and thus, Registrant’s channels of trade do not include, for
example, retail stores, the channel of trade in which the Applicant’s goods are likely
to be sold. Nor can we assume that Applicant’s goods would be sold through
Registrant’s catalog. Thus, we find that the Examining Attorney has not shown the
channels of trade to be the same for Applicant’s goods and the goods in the cited
registration.

9 Examining Attorney’s Br. at 8.
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D. Conclusion

Considering all of the arguments and evidence of record as they pertain to the
relevant du Pont factors, we find that although sporting goods and toys and games
are found in Registrant’s catalogs and might therefore travel through some of the
same channels of trade, this alone does not show that consumers would consider the
goods to emanate from the same source. Moreover, we find the shared term in the
marks, “favorite,” is so weak that consumers will look to distinguishing features in
the marks and there would be no likelihood of confusion.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Lanham Act is reversed.