GoBuryMe, LLC

Trademark Trial and Appeal BoardAug 5, 2019

88009716 (T.T.A.B. Aug. 5, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: August 5, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re GoBuryMe, LLC _____ Serial No. 88009716 _____ Tara M. Madison of Kean Miller LLP for GoBuryMe, LLC. Julie H. Choe, Trademark Examining Attorney, Law Office 126, Andrew Lawrence, Managing Attorney. _____ Before Taylor, Kuczma, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background GoBuryMe, LLC (“Applicant”) seeks registration on the Principal Register of the mark INLIEUOF.COM in standard characters for “On-line memorial fundraising services provided by funeral homes to help families or loved ones to raise money for funeral expenses to be paid directly to funeral homes; crowdfunding services in the Serial No. 88009716 - 2 - nature of accepting and administering monetary contributions from a group of individuals to be paid directly to funeral homes for funeral expenses” in International Class 36.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark INLIEU in standard characters for “Downloadable mobile applications for permitting users to make charitable donations in lieu of gifts” in International Class 9.2 After the Examining Attorney made the refusal final, Applicant appealed. II. 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). Two key considerations are the similarities between the marks and the relatedness of the goods and services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (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 1 Application Serial No. 88009716 was filed June 21, 2018 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on an alleged bona fide intention to use the mark in commerce. 2 Registration No. 5546296 issued August 21, 2018. Serial No. 88009716 - 3 - cumulative effect of differences in the essential characteristics of the goods [and services] and differences in the marks.”). A. Similarity of the Marks We first compare INLIEUOF.COM to INLIEU “in their entireties as to 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, 1691 (Fed. Cir. 2005). (quoting DuPont, 177 USPQ at 567). The test assesses not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the services offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). We find the marks to be highly similar because of the common wording INLIEU. See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[I]n 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”); see also Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). The marks look and sound similar because Applicant’s mark incorporates the entirety of the cited mark, adding only OF.COM at the end. As the first part of Applicant’s mark, INLIEU “is most likely to be impressed upon the mind of a purchaser and Serial No. 88009716 - 4 - remembered,” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) and Palm Bay Imps., 73 USPQ2d at 1692, especially given that the remaining part of Applicant’s mark, “OF.COM,” consists only of two syllables, a short preposition and a generic top-level domain, neither of which consumers would tend to rely on for source indication. See In re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d 1532, 1537 (Fed. Cir. 2009) (“standard usage of ‘.com’ to show a commercial internet domain” does not add source-indicating significance); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1373 (Fed. Cir. 2004) (.com generally possesses no source-identifying characteristics). We are not convinced by Applicant’s argument that the lack of spaces between the words in the mark undercuts this general principle. Applicant has elsewhere acknowledged that consumers will recognize the individual words in each mark regardless of the lack of spaces. “In lieu” is defined as “instead,” and “in lieu of” is defined as “instead of.”3 Applicant acknowledges that the evidence of record suggests that “‘in lieu,’ in usage, is never used without the ‘of.’”4 We find that this contributes to the marks having a very similar connotation and commercial impression because even though the registered mark does not include OF, consumers will recognize INLIEU as a reference to the full expression “in lieu of,” the same expression that appears in Applicant’s mark. The common element in Applicant’s and Registrant’s marks is the focus of the connotations and commercial impressions, rendering them highly similar. 3 TSDR January 28, 2019 Office Action at 2 (merriam-webster.com). 4 4 TTABVUE 10 (Applicant’s Brief). Serial No. 88009716 - 5 - As for Applicant’s argument, relying on an inter partes district court case, that our assessment of the similarity of the marks should take account of other factors such as “different markets” and “different target customers,” as noted below, our analysis in this ex parte proceeding focuses on Applicant’s and Registrant’s identifications, and is guided by the DuPont factors, which we weigh together in determining whether confusion is likely. Given their resemblance in sound, appearance, connotation and commercial impression, we find Applicant’s mark and the cited mark are very similar. This factor weighs in favor of a likelihood of confusion. B. The Goods and Services, Trade Channels, and Classes of Consumers “[L]ikelihood of confusion can be found ‘if the respective products [and services] are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs. 101 USPQ2d at 1722 (internal citations omitted). In analyzing the second DuPont factor, we look to the identifications in the application and cited registration. See Stone Lion Capital 110 USPQ2d at 1162; Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “[I]t is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods [or services] within a particular class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); see also Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Serial No. 88009716 - 6 - Applicant’s services involve online memorial fundraising to help families or loved ones finance funeral expenses that are paid directly to funeral homes, while the cited registration identifies mobile applications (apps) that facilitate charitable donations in lieu of gifts. The Examining Attorney introduced definitions of some of the terminology in the identifications,5 and requested judicial notice of others in her Brief.6 Applicant has not objected. We grant the request and take judicial notice of the entries for “donation,” “charitable,” “fundraising,” and “crowdfunding” from the online Random House Unabridged Dictionary and the Merriam-Webster Online Dictionary. See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). According to the Examining Attorney, “the same entity commonly provides fundraising and/or crowdfunding services and downloadable applications for the collection of donations under the same mark through the same trade channels.”7 The following examples reflect the type of evidentiary support in the record: The Crowdwise by Gofundme website promotes “[s]ocial fundraising that actually works for nonprofits,” and offers the CrowdRise Giving Tower app, allowing users to “easily make a donation to any of hundreds of causes.”8 The Qgiv platform facilitates online giving, promotes “2,600 organizations” that are its customers, including branches of Junior Achievement, the United Way, and 5 October 11, 2018 Office Action at 8-20; January 28, 2019 Office Action at 35-65. 6 7 TTABVUE 15, 21-32. 7 7 TTABVUE 11 (Examining Attorney’s Brief). 8 October 11, 2018 Office Action at 8-14. Serial No. 88009716 - 7 - Boys & Girls Clubs, which use the platform, inter alia, to collect donations and conduct peer-to-peer fundraising, and Qgiv offers Qgiv’s Mobile Virtual Terminal app that allows users to accept donations.9 The MobileCause website promotes its “MobileCause Online and Event Fundraising Software” including “online giving and text-to-donate” and “peer-to-peer campaigns,” which are explained as “Family, friends and corporate partners can fundraise on your behalf using their own mobile-friendly peer-to-peer or crowdfunding pages.”10 The Give by Cell website promotes its “mobile fundraising tools” to “non-profit organizations” to support their fundraising.11 The DonorsChoose.org website invites users to fulfill public school teachers’ requests for “much-needed materials and experiences for their students” and make a “gift of any amount,” and its blog announces that the app CauseWorld can be used to help financially support DonorsChoose.org.12 The Fundly website promotes that its “donation platform is easy to use, helpful and scales to any size fundraiser,” with a link inviting “Nonprofits” to “Start Your Campaign.” Users also are invited to “Manage Your Campaign From Anywhere With The Free Fundly App.”13 The site has a page dedicated to “Memorial & Funeral Fundraisers,” including “to ease the financial burden left with their passing.”14 The Funeral Donation App website provides “Online Funeral Donation Services” by which users may “[d]onate directly to the funeral home, church, or in the interest of the departed to ensure that [their] donation gets to who needs it most.” The site explains that services are provided 9 October 11, 2018 Office Action at 15-17. 10 January 28, 2019 Office Action at 35-37 (mobile cause.com). 11 January 28, 2019 Office Action at 59 (givebycell.com). 12 October 11, 2018 Office Action at 18-20. 13 January 28, 2019 Office Action at 51 (fundly.com). 14 January 28, 2019 Office Action at 53 (fundly.com). Serial No. 88009716 - 8 - online and through mobile applications.15 The Google Play page featuring this app states that it “allows users to donate to the preferred charity of a deceased person… [or] [t]he donor also has the option to simply make a donation directly to the funeral home.”16 This evidence suggests consumer exposure to the same entity providing fundraising services and offering a mobile application to facilitate the fundraising and donation process, all under the same mark. Even in the more specific context of memorial fundraising, the Fundly and Funeral Donation App evidence shows that the fundraising services and the mobile app are offered under the same mark. We consider this evidence sufficient to show the relatedness of Applicant’s services to the goods in the cited registration. In its Reply Brief, Applicant suggests that this evidence is inapposite because each example shows that “the singular entity is using both an app and website to facilitate the same service to the same users for the same purpose.”17 According to Applicant, this cannot be said of its services and the mobile apps in the cited registration. However, focusing as we must on the relevant identifications, the definitions in the record make clear that “charitable donations in lieu of gifts”18 could encompass donating to “help families or loved ones” with funeral expenses. Thus, as Applicant’s 15 January 28, 2019 Office Action at 62-63 (afuneralapp.com). 16 January 28, 2019 Office Action at 65 (play.google.com). 17 8 TTABVUE 5-6 (Applicant’s Reply Brief). 18 “Charitable” can be defined as “full of love and goodwill toward others: BENEVOLENT.” January 28, 2019 Office Action at 12 (merriam-webster.com). Serial No. 88009716 - 9 - services and Registrant’s goods are identified, we do not find Applicant’s contention to be a legitimate point of distinction from the third-party evidence of relatedness. Turning to the third DuPont factor, the third-party website evidence also demonstrates that services such as Applicant’s and goods such as Registrant’s move through overlapping channels of trade, reaching some of the same classes of consumers. While Applicant contends that its services and marketing efforts are exclusively directly to funeral homes and service providers, not to end users, its recitation of services is not so limited. Indeed, “[t]he authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of [services] set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s [services], the particular channels of trade or the class of purchasers to which sales of the [services] are directed.” Octocom Syst., 16 USPQ2d at 1787. Applicant’s identification sets out that money raised through fundraising or crowdfunding will be paid directly to funeral homes, but does not otherwise restrict its services. Thus, the recitation does not bear out Applicant’s contentions that its services are restricted to funeral providers, and that its services cannot be considered charitable. We find that Applicant’s identification leaves open the possibility that the fundraising and crowdfunding services may be provided to anyone, and encompasses situations where helping the families or loved ones of the deceased to raise money for funeral expenses may be considered charitable in nature. Serial No. 88009716 - 10 - Similarly, we find unpersuasive Applicant’s arguments, relying on screenshots of Registrant’s website, about the alleged more specific actual nature of Registrant’s identified “downloadable mobile applications for permitting users to make charitable donations in lieu of gifts.” We cannot consider alleged marketplace realities not reflected in the identification of goods. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the identification is unrestricted, “we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods”). The third-party Internet evidence discussed above demonstrates the relatedness of the goods and services and also shows that they are promoted and sold through the same websites to the same consumers. Thus, the second and third DuPont factors weigh in favor of a finding of likely confusion. C. Degree of Care in Purchasing In its Reply Brief, Applicant contends that the nature of its services involving memorial gifts and the nature of Registrant’s goods involving charitable donations suggest a higher degree of care in purchasing. No evidence was cited in support. See In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975) (“Statements in a brief cannot take the place of evidence.”); Galen Med. Assocs., Inc. v. United States, 369 F.3d 1324, 1339 (Fed. Cir. 2004) (“Statements of counsel . . . are not evidence.”). We cannot infer from the nature of the goods and services that they necessarily involve a higher than usual degree of care in purchasing, and because we must consider the “least sophisticated potential purchasers,” we find this factor Serial No. 88009716 - 11 - neutral. See Stone Lion Capital Partners, 110 USPQ2d at 1163 (“Board precedent requires the decision to be based ‘on the least sophisticated potential purchasers.’”). III. Conclusion The overall similarity of the marks for related goods and services that move in some of the same channels of trade to the same classes of customers renders confusion likely. Decision: The refusal to register Applicant’s mark is affirmed.