Ghosia, Inc.

Trademark Trial and Appeal BoardApr 23, 2014

No. 85680609 (T.T.A.B. Apr. 23, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: April 23, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Ghosia, Inc. _____ Serial No. 85680609 _____ Eric Karich, Law Office of Eric Karich, for Ghosia, Inc. Linda M. Estrada, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). _____ Before Taylor, Ritchie, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: On July 18, 2012, applicant applied to register the mark SINISTER for “land vehicle parts, namely, wheels” in International Class 12.1 Registration has been finally refused on the ground of a likelihood of confusion pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with the mark SINISTER DIESEL, with DIESEL disclaimed, for “diesel engines for land vehicles; diesel motors for land vehicles,” also in International Class 12.2 Both marks are in standard characters. 1 Application Serial No. 85680609, alleging June 1, 1996 as the date of first use of the mark anywhere and in commerce. 2 Registration No. 3845189, issued September 7, 2010. Serial No. 85680609 2 Applicant timely appealed the refusal. Applicant and the examining attorney each filed a brief. Analysis Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of 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 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.”). We discuss each of the du Pont factors as to which applicant or the examining attorney submitted argument or evidence. To the extent that any other du Pont factors for which no evidence or argument was presented may nonetheless be applicable, we treat them as neutral. A. Similarity of the Marks We first consider the du Pont likelihood of confusion factor focusing on “‘the similarity or dissimilarity of the 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 test is not a side-by- side comparison of the marks, but instead ‘whether the marks are sufficiently Serial No. 85680609 3 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 omitted). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, we cannot dissect the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); 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 a consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751. The cited mark is SINISTER DIESEL, with DIESEL disclaimed. Disclaimed terms typically are accorded less weight, or are less significant, because they may be descriptive or generic. See Cunningham v. Laser Golf Cop., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l Data, 224 USPQ at 752). We find SINISTER to be dominant in the cited registered mark, given its placement as the first word in the mark and the descriptive nature of the word DIESEL in Serial No. 85680609 4 association with registrant’s goods. See Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). The distinctive term SINISTER, which appears to be arbitrary in association with the goods at issue, is identical to the sole word in the applied-for mark. Moreover, the cited mark incorporates applicant’s mark in its entirety. Likelihood of confusion has been found where the entirety of one mark is incorporated within another. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (finding applicant’s mark ML similar to registrant’s stylized mark ML MARK LEES); In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding CAREER IMAGE for women’s clothing stores and women’s clothing likely to cause confusion with CREST CAREER IMAGES for uniforms including items of women’s clothing, observing: “Applicant’s mark would appear to prospective purchasers to be a shortened form of registrant’s mark.”). For all of these reasons, we find applicant’s mark SINISTER to be similar to the cited mark SINISTER DIESEL, considered in their entireties, in sight, sound, meaning, and overall commercial impression. The first du Pont factor thus strongly supports a conclusion that confusion is likely. B. Similarity of the Goods, Channels of Trade, and Conditions of Sale We turn next to the similarity of the goods, channels of trade, and conditions of sale, the second through fourth du Pont factors. The goods need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that the goods are related in some manner or that the circumstances surrounding their marketing are such that they could be encountered by the same Serial No. 85680609 5 persons under conditions that could, because of the similarities of the marks, give rise to the mistaken belief that they originate from or are in some way associated with the same provider. Coach Servs. Inc., 101 USPQ2d at 1722; Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010). Applicant’s identified goods are “land vehicle parts, namely, wheels.” The goods identified in the cited registration are “diesel engines for land vehicles; diesel motors for land vehicles.” Because there are no limitations as to channels of trade or classes of purchasers in the descriptions of goods and services, we presume that the goods and services move in all normal channels of trade and are available to all potential classes of ordinary consumers. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). Record evidence shows that third parties offer both engines and wheels for land vehicles – separately from vehicles as a whole, of which they obviously are both components – through the same websites or under the same marks. For example: • JDM Engine Corp.: diesel engines and wheels;3 • Ford Motor Company: wheels and remanufactured diesel engines;4 and • Volkswagen: wheels5 and rebuilt diesel engines.6 3 November 17, 2012 Office action at 4-9 (jdmenginescorp.com/accessories/wheels/). 4 Id. at 10-14 (fordparts.com); see also March 22, 2013 final Office action at 83-87. 5 March 22, 2013 final Office action at 4-8 (vw.com). 6 Id. at 13-14 (gex.com). Serial No. 85680609 6 This evidence demonstrates that wheels for land vehicles are related to engines for land vehicles and that they travel through the same channels of trade. The examining attorney also made of record five use-based, third-party registrations covering both wheels and engines for land vehicles (among other goods), as follows: • for engines for land vehicles and wheels for vehicles;7 • HYMOTION for hybrid land vehicle parts, components and assemblies, namely, diesel engines, engines, and wheels;8 • for automobile engines and wheels;9 • GOTHSPEED for automobile engines, motors for automobiles, and wheels;10 and • GREENLEAF for motor vehicle engines and vehicle suspension parts, namely, wheels.11 These third-party registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, but they nonetheless have probative value to the extent that they serve to suggest that the identified goods are of a kind that may emanate from a single source under a single mark. See In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); Venture Out Props. LLC v. Wynn Resorts Holdings LLC, 81 USPQ2d 1887, 1893 (TTAB 2007). 7 Registration No. 1220779, March 22, 2013 final Office action at 99-101. 8 Registration No. 4020921, id. at 109-11. 9 Registration No. 3815025, id. at 112-14. 10 Registration No. 3657796, id. at 115-17. 11 Registration No. 2809290, id. at 118-19. Serial No. 85680609 7 For these reasons, we find that applicant’s goods are related to the goods identified in the cited registration and travel through the same channels of trade. In our likelihood of confusion analysis, the second and third du Pont factors thus support a finding that confusion is likely. We next consider, under the fourth du Pont factor, the conditions under which and buyers to whom sales are made. Applicant argues, without evidentiary support, that both its goods and those of the prior registrant are targeted to sophisticated consumers who are knowledgeable about their vehicles, and that: “In the minds of the sophisticated consumers of such custom after-market automotive products, diesel engines are entirely different from high end custom wheels.”12 Neither the application nor the cited registration is limited to high-end or custom after-market automotive products, and we are bound by the identifications as written. In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986). Assuming nonetheless that consumers of the respective goods are sophisticated, it is well-settled that even careful, sophisticated purchasers are not immune from source confusion. See Cunningham, 55 USPQ2d at 1846; In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986). We find that the similarities between the marks and the goods offered thereunder outweigh any sophisticated purchasing decision. See HRL Assocs. Inc. v. Weiss Assocs. Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, 902 F.2d 1546, 14 12 Applicant’s Brief at unnumbered p. 6. Serial No. 85680609 8 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful buying decisions, and expensive goods). Du Pont factor four is neutral. C. Applicant’s Expired Registration Finally, applicant notes that it previously owned a trademark registration for the mark SINISTER for use with wheels, which was allowed to expire inadvertently.13 Cancelled or expired registrations generally have no probative value, and applicant’s prior ownership of such a registration does not warrant a different result when the du Pont factors weigh in favor of finding a likelihood of confusion. See In re Davey Prods. Pty. Ltd., 92 USPQ2d at 1206; In re Ginc UK Ltd., 90 USPQ2d 1472, 1480 (TTAB 2007). On this record, we find confusion likely. See In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must decide each case on its own merits.”). If applicant is the prior user, it may have an adequate remedy through a petition for cancellation of the cited registration. Conclusion Having carefully considered the relevant du Pont factors, we find that applicant’s mark SINISTER for its identified goods is likely to cause confusion with the cited registered mark, SINISTER DIESEL. Decision: The examining attorney’s refusal to register applicant’s mark under Section 2(d) of the Trademark Act is affirmed. 13 See id. The expired registration is not of record.