GCommerce Fulfillment Cloud

Trademark Trial and Appeal BoardFeb 4, 2021

88030007 (T.T.A.B. Feb. 4, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: February 4, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re GCommerce Fulfillment Cloud _____ Serial No. 88030007 _____ Robert W. Clarida of Reitler Kailas & Rosenblatt LLC, for GCommerce Fulfillment Cloud. Michael FitzSimons, Trademark Examining Attorney, Law Office 103, Stacy Wahlberg, Managing Attorney. _____ Before Cataldo, Greenbaum and Pologeorgis, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: GCommerce Fulfillment Cloud (“Applicant”) seeks registration on the Principal Register of the mark SHIPEZ (in standard characters) for Providing online non-downloadable software for automation of shipping management and fulfillment, in International Class 42.1 1 Application Serial No. 88030007 was filed on July 9, 2018, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) of the Trademark Act. Serial No. 88030007 - 2 - The Trademark Examining Attorney has 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 services, so resembles the following registered marks as to be likely to cause confusion, mistake or deception:  SHIPPINGEASY (in standard characters), SHIPPING EASY (in standard characters, “SHIPPING” disclaimed), and SHIPPING EASY and Design (“SHIPPING” disclaimed), displayed as , all owned by one registrant for “Application Service Provider (ASP) featuring software for use in managing online and offline sales transactions, customer records, and shipments” in International Class 42;2 and  EASYSHIP (in standard characters), for “computer programs for use in the automatic production of airway bills, shipping labels, reports, rates and invoices and in tracking the shipment of parcels” in International Class 9, owned by a second registrant.3 After the Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register as to each cited registration. 2 Reg. No. 5215340 (issued on May 30, 2017), Reg. No. 5298169 (issued on September 26, 2017), and Reg. No. Reg. No. 5322580 (issued on October 31, 2017). Reg. No. 5322580 includes the following description of the mark: “The mark consists of the words ‘shipping easy’ in a stylized form in which the tail of the letter ‘y’ forms a smile.” Color is not claimed as a feature of the mark. 3 Reg. No. 1730734 issued on November 10, 1992, and has been renewed twice. Serial No. 88030007 - 3 - I. Likelihood of Confusion Our determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); see also 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., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). However, in any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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 or Dissimilarity of the Goods and Services Under the second DuPont factor, we compare the services as they are identified in the application and the goods and services as they are identified in the cited Serial No. 88030007 - 4 - registrations. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); In re Dixie Rests. 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); Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The services identified in the application, “[p]roviding online non-downloadable software for automation of shipping management and fulfillment,” are encompassed by, and thus legally identical to, the broadly worded “Application Service Provider (ASP) featuring software for use in managing online and offline sales transactions, customer records, and shipments” identified in Reg. Nos. 5215340, 5298169 and 5322580. See, e.g., Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”); In re Linkvest S.A., 24 USPQ2d 1716, 1718 (TTAB 1992). And the services identified in the application are inherently related to the goods identified in Reg. No. 1730734, “computer programs for use in the automatic production of airway bills, shipping labels, reports, rates and invoices and in tracking the shipment of parcels,” because they serve the same purpose, namely, automation of shipping management, albeit in different media formats. Cf. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948 (Fed. Cir. 2006) (“Here the board found the pharmaceutical and medical fields to be distinct from the music Serial No. 88030007 - 5 - and entertainment fields, which we affirm below. Therefore, it was proper for the board to ground its determination of relatedness in the fields for which the goods are created, rather than the media format in which they are delivered. This subject- matter-based mode of analysis is consistent with our precedent[.]” (citations omitted)). As additional evidence that the services identified in the application and the goods identified in Reg. No. 1730734 are related, the Examining Attorney submitted printouts from four third-party entities (readycloud.com, connectship.com, processwweaver.com and csasoftware.com) that provide non-downloadable software for shipping management and downloadable or recorded software for shipping management under a single mark.4 This evidence demonstrates that the identified goods and services emanate from the same source under the same mark, and that consumers are likely to encounter such goods and services in that manner. See, e.g., In re C.H. Hanson Co., 115 USPQ2d 1351, 1355-56 (TTAB 2015); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). Applicant did not address this DuPont factor in its Appeal Brief other than noting that it “respectfully disagrees with the Examining Attorney’s assertion that the goods of the respective parties are similar enough to support a likelihood of confusion, given the differences in the marks and the co-existence of the cited registrations with each other.” 4 TTABVUE 8. We address these arguments below. The second DuPont factor strongly weighs in favor of a finding of likely confusion. 4 December 20, 2019 Final Office Action, TSDR 2-13. Serial No. 88030007 - 6 - B. Trade Channels and Classes of Consumers Because the services identified in the application and Reg. Nos. 5215340, 5298169 and 5322580 are identical, we must presume that the channels of trade also are identical. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). And the relatedness evidence from the commercial websites mentioned above supports a finding that the services identified in the application and the goods identified in Reg. No. 1730734 move in the same channels of trade and that they are offered to the same classes of consumers. See In re Anderson, 101 USPQ2d 1912, 1920 (TTAB 2012). The legal presumptions and relatedness evidence, which also shows that the channels of trade and classes of consumers overlap, support a finding of likely confusion. Applicant did not address this DuPont factor in its Appeal Brief. This DuPont factor also strongly supports a finding of likely confusion. C. Similarity or Dissimilarity of the Marks We next compare Applicant’s mark SHIPEZ and the cited marks SHIPPINGEASY, SHIPPING EASY and (owned by one registrant), and the cited mark EASYSHIP (owned by another registrant), “in their entireties as to appearance, sound, connotation and commercial impression.” Detroit Athletic Co., 128 USPQ2d at 1048 (quoting DuPont, 177 USPQ at 567); see also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d Serial No. 88030007 - 7 - 1689, 1691 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” Inn at St. John’s, 126 USPQ2d at 1746 (citation omitted); accord Krim-Ko Corp. v Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). “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.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018). Because similarity is determined based on the marks in their entireties, our analysis is not predicated on dissecting the marks into their various components. Stone Lion Capital Partners, 110 USPQ2d at 1161; see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). On the other hand, “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.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Further, the marks “must be considered … in light of the fallibility of memory …” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quotation omitted). We focus on the recollection of the average consumer—here, an ordinary business consumer who Serial No. 88030007 - 8 - ships merchandise—who normally retains a general rather than a specific impression of trademarks. Id. at 1085; Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971). We also are mindful that “[w]hen marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Cf. Shen Mfg. Co. v. The Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004) (where goods and services are highly related, “the degree of similarity necessary to support a conclusion of likely confusion declines.”) (quoting Century 21 Real Estate Corp., 23 USPQ2d at 1700). Applicant argues that its mark and the four cited registered marks are “significant[ly] differen[t]” and “inherent[ly] weak[] … in the context of products related to shipping,” and therefore “the marks create materially different commercial impressions.” 4 TTABVUE 7. As a corollary, Applicant argues that “[t]he mere existence of the four cited marks, which do not share a common owner, itself testifies to the lack of a likelihood of confusion” because if the cited mark EASYSHIP can coexist with the cited marks SHIPPINGEASY, SHIPPING EASY and , then “all four of them can co-exist with ShipEZ,” and that if the latter three cited marks “were registered notwithstanding the prior registration of EASYSHIP … apparently the ‘-ING’ in these marks was deemed sufficient to avoid a 2(d) refusal at that time.” 4 TTABVUE 7-8, 10. The Examining Attorney focuses on the visual, aural Serial No. 88030007 - 9 - and connotative similarities between Applicant’s mark and the cited registered marks. Applicant’s mark SHIPEZ and the cited marks SHIPPINGEASY, SHIPPING EASY and (Reg. Nos. 5125340, 5298169 and 5322580, respectively) are very similar in appearance and sound because they each begin with the verb SHIP or its gerund form SHIPPING and end with the equivalent terms EASY or EZ, with no additional literal elements.5 Because the comparison of the marks is not necessarily made on a side-by-side basis, and because purchasers, with their imperfect recollections of trademarks, are unlikely to recall the differences in spelling when they encounter the marks at different times and in connection with legally identical shipping services, the different spellings do not distinguish the marks. See St. Helena Hosp., 113 USPQ2d at 1085. Likewise, the stylization and arrow design protruding from the letter “Y” in Reg. No. 5322580, and the presence of a space between the words SHIPPING and EASY in Reg. Nos. 5298169 and 5322580 are relatively minor, and likely would not be noticed or remembered by consumers. See, e.g., Viterra, 101 USPQ2d at 1909-11 (wording normally accorded greater weight in composite mark because consumers will use the wording to request the goods or services); Stock Pot, Inc. v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (STOCKPOT and STOCK POT are 5 The Examining Attorney submitted a printout from wordnik.com showing that “EZ” is a recognized abbreviation for the word “easy.” October 30, 2018 Office Action, TSDR 10. Serial No. 88030007 - 10 - similar). Moreover, the minimal design in Reg. No. 5322580 does not sufficiently distinguish it from Applicant’s mark because Applicant’s mark is in standard characters and could be presented in any font style or size, including in the same lettering used in Reg. No. 5322580. See Viterra, 101 USPQ2d at 1909; see also Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a). Overall, we find that Applicant’s mark and the three cited marks look and sound very similar. The meanings and commercial impressions of the marks also are fundamentally the same, with each suggesting that the identified shipping services are easy to use. Applicant’s mark SHIPEZ and the registered mark EASYSHIP also look and sound very similar because each combines the word SHIP with the word EASY or its equivalent EZ. The marks thus are essentially “reverse combinations” of similar words or elements—a “transposition” of the elements that make up the marks. See, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (affirming refusal to register THE WINE SOCIETY OF AMERICA and Design based on registration of AMERICAN WINE SOCIETY 1967 and Design, finding that “the transposition of words does not change the overall commercial impression”); Bank of Am. Nat’l Trust and Sav. Ass’n v. The Am. Nat’l Bank of St. Joseph, 201 USPQ 842, 845 (TTAB 1978) (“the words ‘BANKAMERICA’ and ‘BANK OF AMERICA’, on the one hand, and ‘AMERIBANC’, on the other, convey the same meaning and create substantially similar commercial impressions”). In In re Nationwide Indus., Inc., 6 USPQ2d 1882, 1884 (TTAB 1988), affirming the refusal to register RUST BUSTER for rust-penetrating spray lubricant based on Serial No. 88030007 - 11 - the mark BUST RUST for penetrating oil, the Board held that “the reversal in one mark of the essential elements of another mark may serve as a basis for a finding of no likelihood of confusion only if the transposed marks create distinctly different commercial impressions.” Likelihood of confusion ordinarily is found where transposed marks do not convey different commercial impressions. See Carlisle Chem. Works, Inc. v. Hardman & Holden, 434 F.2d 1403, 168 USPQ 110 (CCPA 1970) (reversing dismissal of oppositions to registration of COZIRC based on use of ZIRCO for related goods, finding that the marks “are substantially similar, the difference being in a reversal of syllables which are essentially the same”); In re Gen. Tire & Rubber Co., 213 USPQ 870 (TTAB 1982) (affirming refusal to register SPRINT STEEL RADIAL for pneumatic tires based on registration for RADIAL SPRINT for vehicle tires, finding that the marks “convey the same meaning, that is, a steel radial tire called ‘SPRINT’ or a radial tire called ‘SPRINT’ both of which could emanate from the same source”); Plus Prods. v. Physicians Formula Cosmetics, Inc., 198 USPQ 111, 114 (TTAB 1978) (“… the use of identical terms in inverse order as we have in the present case is likely to cause confusion in trade when used on such closely related cosmetic products”); Fisher Sci. Co. v. Ipco Hosp. Supply Corp., 165 USPQ 471, 472 (TTAB 1970) (sustaining opposition to MIX O THERM based on THERMIX used for identical goods, stating “they are in their essentials merely reverse combinations of the same words, and such being the case, would more than likely convey substantially the same commercial impressions”); Royal Crown Cola Co. v. Bakers Franchise, 150 USPQ 698, 700 (TTAB 1966), aff’d, 404 F.2d 985, 160 USPQ 192 (CCPA 1969) (“… Serial No. 88030007 - 12 - the applicant’s compound mark includes the same words which make up opposer’s mark, that is to say ‘RITE DIET’ is merely ‘DIET-RITE’ transposed. The marks of the parties create substantially the same commercial impressions .…”). Cf. In re Akzona Inc., 219 USPQ 94, 96 (TTAB 1983) (“Applicant’s mark ‘SILKY TOUCH,’ conveys the impression that applicant’s synthetic yarns are silky to the touch. On the other hand, registrant’s mark ‘TOUCH O’ SILK,’ suggests that registrant’s clothing products contain a small amount of silk.”); Murphy, Brill and Sahner, Inc. v. N.J. Rubber Co., 102 USPQ 420 (Commr. Pat. 1954) (finding that TOPFLITE for shoe soles conveys a different meaning than FLITE TOP for hosiery). We find that in the context of the identified shipping services and software used for shipping, the meanings and commercial impressions of EASYSHIP and SHIPEZ are essentially the same, with each suggesting an easy or uncomplicated shipping experience. As to Applicant’s arguments concerning the purported crowded field summarized above, there is no evidence of third party use or registration of marks in which variants of the words SHIP and EASY are combined for goods or services that are similar to those identified in the application and cited registrations, and thus no evidence to establish commercial weakness of the combined terms, or that customers are accustomed to relying on small differences to distinguish among many variants of the combined terms. Cf. 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) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 Serial No. 88030007 - 13 - USPQ2d 1671, 1674 (Fed. Cir. 2015) (“extensive evidence of third-party use and registrations is ‘powerful on its face,’ even where the specific extent and impact of the usage has not been established”). Indeed, as the Examining Attorney points out, “although four registrations have been cited against applicant’s mark, the cited registrations are owned by only two different entities.” 6 TTABVUE 8. Nonetheless, it is readily apparent that Applicant’s mark and the cited registered marks are at least equally suggestive of the identified shipping goods and services, and thus that the marks in the cited registrations have some conceptual weakness. But this record does not support a finding that the cited registered marks are entitled to such narrow scopes of protection so as to also allow registration of Applicant’s very similar mark SHIPEZ. See, e.g., King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (“Confusion is confusion. The likelihood thereof is to be avoided, as much between ‘weak’ marks as between ‘strong’ marks, or as between a ‘weak’ and a ‘strong’ mark.”); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) (“even suggestive or weak marks are entitled to protection from the use of a very similar mark for legally identical [goods or] services”). Finally, because we are not privy to the reasons that the cited SHIPPINGEASY, SHIPPING EASY and registrations coexist with the cited EASYSHIP registration, we follow the often repeated principle from the Federal Circuit, our primary reviewing court, that every application is examined on its own record. See In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“[The Federal Circuit], like the Board must evaluate the evidence in the present record to Serial No. 88030007 - 14 - determine whether there is sufficient evidence ….”); In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Applicant’s allegations regarding similar marks are irrelevant because each application must be considered on its own merits.”); see also In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior registrations does not bind the [Trademark Trial and Appeal] Board or this court.”). The DuPont factor of the similarity of the marks favors a finding of a likelihood of confusion. D. Conclusion In view of the very similar marks, legally identical services and closely related goods and services which move in the same channels of trade to the same classes of consumers, confusion is likely between Applicant’s standard character mark SHIPEZ and each of the cited registered marks: SHIPPINGEASY, SHIPPING EASY and , and EASYSHIP. Decision: The refusal to register Applicant’s mark SHIPEZ is affirmed.