Fishpond.com, Inc.

Trademark Trial and Appeal Board

Oct 2, 2014

No. 85761548 (T.T.A.B. Oct. 2, 2014)

Mailed: October 2, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fishpond.com, Inc.
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Serial No. 85761548
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Robert O. Sailer of Pacific Northwest Law Group, for Fishpond.com, Inc.

Bridgett G. Smith, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
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Before Mermelstein, Ritchie, and Hightower, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Fishpond.com, Inc. (“Applicant”) filed an application to register the mark
FISHPOND,1 in standard character format, for services recited as “online retail
store services featuring consumer products, namely, toys, music, books, shoes,
apparel, games, cookware, bags, and shoes [sic],” in International Class 35.

1 Serial No. 85761548, filed October 23, 2012, pursuant to Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging a date of first use on January 4, 2004, and first use in
commerce on October 19, 2011.
This Opinion Is Not a
Precedent Of The TTAB
Serial No. 85761548

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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark so resembles the following three marks, all registered to the
same registrant, that when used on or in connection with Applicant’s recited
services, Applicant’s mark is likely to cause confusion or mistake or to deceive:
1. FISHPOND,2 in standard character format,
for “sportswear, namely, fishing vests and hats,” in International Class 25;
2. FISHPOND, and design,3 as shown below,
for “luggage, luggage tags, duffle bags, tote bags, shoulder bags, backpacks,
chest packs, waist packs, fanny packs, satchels, attaché cases, briefcases,
messenger bags, men’s clutches, toiletry cases sold empty, travel pouches,
wallets and walking sticks,” in International Class 18:

and
3. FISHPOND, and design,4 also as shown below,

2 Registration No. 2996826, issued September 20, 2005. Sections 8 and 15 affidavits
accepted and acknowledged.
3 Registration No. 3489892, issued August 19, 2008. Sections 8 and 15 affidavits accepted
and acknowledged.
4 Registration No. 2541219, issued February 19, 2002. Sections 8 and 15 accepted and
acknowledged. Renewed.
Serial No. 85761548

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for “fishing equipment namely sportsmen’s fishing bags, tackle containers,
and tippet dispensers,” in International Class 28:

Upon final refusal of registration, Applicant filed a timely appeal. Both
Applicant and the Examining Attorney filed briefs.
We base our determination under Section 2(d) 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); see also, In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See
Federated Foods, Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the
marks.”). We consider each of the factors as to which Applicant or the Examining
Attorney presented arguments or evidence. The others, we consider to be neutral.

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The Goods and Services, Channels of Trade, and Classes of Consumers
We first consider the similarities and dissimilarities of the goods and services at
issue in the application and the cited registrations. The application recites “online
retail store services featuring” among other things “apparel” and “bags.” The goods
in the cited registrations identify either various types of apparel (Registration No.
2996826 “sportswear, namely, fishing vests and hats”) or “bags” (Registration No.
3489892 “. . . duffle bags, tote bags, shoulder bags, backpacks, chest packs, waist
packs, fanny packs, satchels, attaché cases, briefcases, messenger bags . . . ”; and
Registration No. 2541219 “. . . sportsmen’s fishing bags”). Accordingly, the goods in
the cited registrations are legally identical to those identified as being “featured” in
the “online retail store services” of the application. Retail store services have
frequently been found to be related to goods sold by those retail stores. See, e.g., In
re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988)
(BIGGS for retail grocery and general merchandise store services likely to be
confused with BIGGS for furniture); Wet Seal, Inc. v. FD Management, Inc., 82
USPQ2d 1629, 1640 (TTAB 2007) (women’s clothing stores and cosmetics found to
be related); In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (“It is clear that
consumers would be likely to believe that jewelry on the one hand and retail stores
selling jewelry on the other emanate from or are sponsored by the same source if
such goods and services are sold under the same or similar marks.”); In re Peebles
Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (“As we have said before there is no
question that store services and the goods which may be sold in that store are
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related goods and services …”); see also 4 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 24:25 (4th ed. updated June 2014) (“Where
the services consist of retail sales services, likelihood of confusion is found when
another mark is used on goods which are commonly sold through such a retail
outlet.”). We do not give credence to Applicant’s argument that its online retail
services should not be found related to the goods in the cited registrations since
Applicant features other goods as well. Rather, we find that the application
specifically sets forth these goods as among those Applicant features.
Although Applicant argues that registrant limits its goods to those relating to
fishing gear, this argument is irrelevant since Applicant’s identification of “apparel”
and “bags” would be presumed to include all “apparel” and “bags,” including those
used for fishing. Furthermore, we note that the identification in Registration No.
3489892 does not limit the purpose of the identified bags.
Finally, Applicant admits that there is some overlap. (February 13, 2014
Request for Reconsideration) (“There are literally thousands of third party products
sold on Applicant’s website, only a small portion of which could be said to ‘overlap’
with those third party products sold by Registrant.”). The relevant issue is the goods
and services as they are identified in the application and registration, not those
goods which are sold on Applicant’s website. Nonetheless, we agree that the prior
registrant’s identified goods overlap with those which are the subject of applicant’s
retail services. Overall, we find this du Pont factor weighs strongly in favor of
finding a likelihood of confusion.
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As for the channels of trade, as Applicant points out, its channels of trade are
limited to online retail. There is nothing, however, to prevent registrant’s goods
from similarly being sold through the same channels of trade to the same classes of
consumers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370,
1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014) (“Even assuming there is no overlap between Stone Lion’s and
Lion’s current customers, the Board correctly declined to look beyond the
application and registered marks at issue. An application with ‘no restriction on
trade channels’ cannot be ‘narrowed by testimony that the applicant’s use is, in fact,
restricted to a particular class of purchasers.’”). Accordingly, we must presume that
registrant’s apparel and bags may be offered through online retail outlets like
Applicant’s, and to the same consumers. This du Pont factor too, we find to weigh in
favor of finding a likelihood of confusion.
The Marks
We consider and compare the appearance, sound, connotation and
commercial impression of the marks in their entireties. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). The proper test is not a side-by-side comparison of the
marks, but instead ‘whether the marks are sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation
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omitted). Applicant’s mark and the mark in Registration No. 2996826 are both
identical standard character marks FISHPOND. As such, they are identical in sight
and sound. The commercial impression of the cited registration vis-à-vis the
identified goods is suggestive of apparel that may be worn while fishing, i.e., in a
fishpond. The commercial impression of the mark in the application is somewhat
similar, but less literal. The mark is inherently strong, and there is no evidence that
it is used by third parties for similar goods and services.
The mark in cited Registrations No. 3489892 and 2541219 contains the
literal term “FISHPOND” with a circular swirl above, reminiscent of ripples in a
lake or pond. Accordingly, again, the literal element is identical to that in the
application. Although we view the mark as a whole, we note that the design element
does little to change the commercial impression of the mark, i.e., that of a fishpond.
We further note that that the literal element “FISHPOND” is the one which
consumers will use to call for the goods or refer to the mark. See In re Viterra Inc.,
671 F3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012), citing CBS Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
In this regard, we find that the similarities between the marks strongly
outweigh any dissimilarities and the first du Pont factor also weighs in favor of
finding a likelihood of confusion.

Consumer Sophistication
Applicant urges us to consider the consumer sophistication and degree of
purchaser care likely to be exercised for the goods and services at issue in this
proceeding, admitting that it sells to the “general public,” but arguing that
registrant serves “recreational fishermen, specifically, fly fishermen,” which it says
are “sophisticated.” (appl’s brief at 12). In this regard, as with the other du Pont
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factors, we are bound by the parties’ respective identifications of goods and services.
Octocom Systems, Inc. v. Houston Computers Services 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 set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which the sales of goods are directed.”) (citations
omitted).
While both Applicant’s and registrant’s apparel and bags (and related retail
services) may be offered to knowledgeable, sophisticated consumers, in view of the
nature of the goods and services and the lack of limitations in the class of
purchasers, we must presume that they would also be purchased by the general
consumer, including ordinary purchasers of such goods and services. There is no
evidence that ordinary consumers of clothing or bags or retail services in these
fields exercise a heightened degree of care in such transactions. We deem this du
Pont factor to be neutral.
Coexistence/Actual Confusion
Applicant asserts that it has been using its mark in the United States since 2011
without any verified instances of actual confusion. (appl’s brief at 13). For this,
Applicant cites the declaration of Daniel Robertson, which does not appear to be in
the record. In any regard, we note that the absence of actual confusion carries little
weight, especially in an ex parte context. In re Majestic Distilling Co., 65 USPQ2d
at 1205.
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To the extent Applicant’s mark has enjoyed some degree of success, this does not
avoid likelihood of confusion, and indeed may engender reverse confusion with the
prior-registered cited mark.5 See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1690 (Fed. Cir. 1993) (“The term ‘reverse confusion’ has been used to describe
the situation where a significantly larger or prominent newcomer ‘saturates the
market’ with a trademark that is confusingly similar to that of a smaller, senior
registrant for related goods or services.”)
Conclusion
Considering all of the arguments and evidence of record as they pertain to the
du Pont factors, we find that the on-line retail services recited in the application
feature goods identified in each of the cited registrations that may be sold through
the same channels of trade to the same classes of generally unsophisticated
purchasers, the literal portions of the marks are identical, and the marks as a whole
are similar.
Accordingly, we find a likelihood of confusion between Applicant’s mark and the
marks in each of the cited registrations.
Decision: The Section 2(d) refusal to register is affirmed.

5 We do not opine as to applicant’s right to use his mark, but merely his right to
registration, in light of the previously existing cited registration.