Gagandeep S. Arora

Trademark Trial and Appeal BoardMay 22, 2018

No. 87035279 (T.T.A.B. May. 22, 2018)

This Opinion is not a Precedent of the TTAB Mailed: May 22, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Gagandeep S. Arora _____ Serial No. 87035279 _____ Francis J. Ciaramella of Law Offices of Rick Ruz, PLLC, for Gagandeep S. Arora. Clinton Johnson, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Kuhlke, Bergsman and Hightower, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Gagandeep S. Arora (“Applicant”) seeks registration on the Principal Register of the mark KING JAMES in standard characters for goods ultimately identified as “Athletic apparel, namely, pants, jackets, footwear, hats and caps; Baseball caps and hats; Sports caps and hats; Headgear, namely, hats, caps, snow caps, beanies, headbands; Toboggan hats, pants and caps,” in International Class 25.1 1 Application Serial No. 87035279 was filed on May 12, 2016, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. Serial No. 87035279 - 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 mark KING JAMES ACTIVEWEAR in standard characters (ACTIVEWEAR disclaimed), registered on the Principal Register for “T-shirts,” in International Class 25,2 as to be likely to cause confusion, mistake or deception. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration the Board resumed the appeal and briefs were filed. We affirm the refusal to register. I. Likelihood of Confusion When the question is likelihood of confusion, we analyze the 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) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Even within the du Pont list, only factors that are “relevant and of record” need be considered. 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.”). In any likelihood of confusion 2 Registration No. 3972356, issued on June 7, 2011, combined declaration of use and incontestability under Sections 8 & 15 accepted and acknowledged. Serial No. 87035279 - 3 - analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); 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.”). A. Similarity of the Goods/Channels of Trade/Consumers With regard to the goods, channels of trade and classes of consumers, we must make our determinations based on the goods as they are identified in the application and cited registration. See 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, 1004 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may perceive [the respective goods of the parties] as related enough to cause confusion about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d at 1004). Serial No. 87035279 - 4 - As noted above, Applicant’s identified goods, “Athletic apparel, namely, pants, jackets, footwear, hats and caps; Baseball caps and hats; Sports caps and hats; Headgear, namely, hats, caps, snow caps, beanies, headbands; Toboggan hats, pants and caps,” are very closely related to Registrant’s “T-shirts.” The record evidence shows the close relationship between various types of athletic apparel (pants, jackets, footwear, hats) and t-shirts. The Examining Attorney submitted printouts from several different companies that sell Applicant’s and Registrant’s types of goods under the same mark. See, e.g., Sept. 2, 2016 Office Action at 43-54 (Nike website (http://store.nike.com)); Mar. 24, 2017 Office Action at 66-99 (Under Armour website (https://www.underarmour.com)).3 In addition, the Examining Attorney submitted several third-party registrations for the same or similar goods as those of both Applicant and Registrant under the same mark. See, e.g., Reg. No. 4845528 for the mark FITBIT for shirts, t-shirts, tank tops and hats; Reg. No. 5031419 for the mark AMONG THE DEAD for, inter alia, beanies, footwear, hats, jackets, pants and t- shirts; Reg. No. 5031486 for the mark GEAUX-GIRL for, inter alia, athletic apparel, namely, shirts, pants, jackets, footwear; hats; and t-shirts.4 In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)) (third-party registrations may serve to suggest that the goods are of a type that may emanate from a single source). 3 All citations to the prosecution history for the application are to the TSDR (Trademark Status and Document Retrieval) database. See TBMP § 1203.01 (June 2017). 4 Sept. 2, 2016 Office Action at 4-42; Mar. 24, 2017 Office Action at 27-65. Serial No. 87035279 - 5 - Because there are no limitations as to channels of trade or classes of purchasers in either the application or cited registration, we must presume that Applicant’s and Registrant’s goods would move in all normal channels of trade and are available to all classes of purchasers for such goods. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”). In view of the close relationship of the goods, it is likely that they will travel in identical, or at least overlapping, trade channels and be purchased by the same classes of consumers. In addition, the printouts of web pages discussed above from several websites that offer various types of athletic apparel, headgear and t-shirts at the same online stores support this finding.5 In view of the above, these du Pont factors favor a finding of likelihood of confusion. B. Fame of the Registered Mark Applicant argues that “there is no evidence that the cited registration is famous or has acquired secondary meaning within the marketplace….” 7 TTABVUE 5. However, in the context of ex parte proceedings an examining attorney is not expected to submit evidence regarding the fame of the cited mark. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1086 (TTAB 2016); In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 5 See Sept. 2, 2016 Office Action; Mar. 24, 2017 Office Action. Serial No. 87035279 - 6 - 2006); see also TMEP § 1207.01(d)(ix) (Oct. 2017) (“Because of the nature of the evidence required to establish the fame of a registered mark, the Board normally does not expect the examining attorney to submit evidence as to the fame of the cited mark in an ex parte proceeding.”). See also In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009). We find this du Pont factor to be neutral. C. The number and nature of similar marks in use on similar goods. Applicant submitted “several third party registrations and applications, which incorporate the term KING or JAMES” in support of its position that the mark KING JAMES is weak. This evidence does not move the dial in any measurable way. First, registrations are not evidence of use in the marketplace. AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) (“The existence of these registrations is not evidence of what happens in the market place or that customers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive.”). Active third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. See, e.g., In re i.am.symbolic, 123 USPQ2d at 1751; Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015). However, most of these third-party registrations submitted by Applicant have only one element in Serial No. 87035279 - 7 - Registrant’s mark, and consequently have little to no value in evaluating the strength or weakness of the KING JAMES portion of Registrant’s mark. The only one that contains both elements, JAMES KINGDOM, presents a very different connotation and commercial impression. As noted by the Examining Attorney, “[t]he fact that applicant is unable to provide even one third party registration consisting of both the terms, ‘KING’ and ‘JAMES’ in effect supports and reinforces the point that the cited mark is very strong.” 9 TTABVUE 9. We find this du Pont factor neutral. D. Similarity/Dissimilarity of the Marks Under this factor, we compare Applicant’s and Registrant’s marks “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). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); 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). Because the goods are athletic wear and t-shirts without any restrictions or limitations as to price point or classes of consumers, the average customer is an ordinary consumer of the respective goods. Serial No. 87035279 - 8 - The beginning of Registrant’s mark, KING JAMES ACTIVEWEAR, is identical to the entirety of Applicant’s mark KING JAMES. The additional word ACTIVEWEAR in Registrant’s mark is at minimum merely descriptive of the goods, and is appropriately disclaimed. ACTIVEWEAR is defined as “clothing designed to be worn for sports, exercise, and outdoor activities.”6 The addition of this highly descriptive term to Registrant’s mark does not serve to distinguish it from Applicant’s KING JAMES mark. See In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (addition of GROUP to BARR GROUP insufficient to distinguish it from registered mark BARR); see also In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 750-51 (Fed. Cir. 1985) (“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, provided the ultimate conclusion rests on consideration of the marks in their entireties.”). The dominance of KING JAMES in Registrant’s mark is “reinforced by its location as the first [term] in the mark.” In re Integrated Embedded, 120 USPQ2d at 1513 (citing Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 73 USPQ2d at 1692). We find the marks, taken in their entireties, to be highly similar in appearance, sound, connotation and commercial impression. This du Pont factor weighs in favor of a likelihood of confusion. 6 ENGLISH OXFORD LIVING DICTIONARIES (https://en.oxforddictionaries.com) Mar. 24, 2017 Office Action at 23. Serial No. 87035279 - 9 - E. Length of Overlap, Actual Confusion, Extent of Potential Confusion Applicant’s argument that there is no evidence of actual confusion is not persuasive. First, the subject application is based on intent to use and there is no evidence of any overlap in use or opportunities in which confusion could occur. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Second, the absence of actual confusion is entitled to little weight, especially in an ex parte context. See Majestic Distilling Co., 65 USPQ2d at 1205 (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of applicant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). Applicant’s unsupported and speculative statement that “any potential confusion between the respective marks would be de minimis,” has no weight. Accordingly, these du Pont factors are considered neutral. II. Balancing of Factors When we consider that the goods are closely related, the channels of trade and consumers overlap, and the marks are similar, we find that confusion is likely. Decision: The refusal to register Applicant’s mark is affirmed.