Gustavo Gomez

Trademark Trial and Appeal BoardMay 23, 2019

87451192 (T.T.A.B. May. 23, 2019)

Mailed: May 23, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re Gomez _____ Serial No. 87451192 _____ Mark Terry of the Office of Mark Terry for Gustavo Gomez. Ashley D. Hayes, Trademark Examining Attorney, Law Office 108, Steven R. Berk, Managing Attorney. _____ Before Zervas, Kuczma and Adlin, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Applicant Gustavo Gomez seeks registration of HOPON, in standard characters, for “Computer software for engaging and coordinating transportation services; computer software for engaging and coordinating carpooling services; Computer software for coordinating transportation services, namely, software for the automated scheduling and dispatch of motorized vehicles; Computer application software for mobile phones, namely, software for use in transmitting communication from one software to another; Communications software for connecting network users” in This Opinion is Not a Precedent of the TTAB Serial No. 87451192 2 International Class 9.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the following registered marks as to be likely to cause confusion: HOPON, in standard characters, for “Computer software for providing socially-friendly travel listings and information, and for making socially-friendly travel reservations and bookings; computer software for sharing travel plans socially with others and commenting on the travel plans of others; computer software featuring geographic maps, social travel route information and recommendations, and social travel information guides; computer software for social travel planning; computer software for socially arranging and coordinating travel arrangements for individuals and groups” in International Class 9;2 hopIn, in standard characters, for “Computer application software for mobile phones, portable media players, and handheld computers, namely, software for carpooling” in International Class 9;3 and Hop in! Carpooling just got easier., in standard characters (CARPOOLING disclaimed), for “Downloadable computer application software for desktop computers, mobile phones, portable media players, watches and handheld computers, for use by individuals for creating, managing, coordinating and communicating carpool transportation information for delivery to users via the Internet or SMS of automated or user-initiated input regarding carpool information, namely, electronic invitations, emails, calendars, schedules, modifications, electronic alerts, passenger pick up and drop off locations, mode of transportation, carpool drivers, traffic, geographic 1 Application Serial No. 87451192, filed May 16, 2017 under Section 1(b) of the Trademark Act, based on an alleged intent to use the mark in commerce. 2 Registration No. 4732315, issued May 5, 2015. This registration also includes services in International Classes 35, 43 and 45, but the refusal is based only on the Class 9 goods. 3 Registration No. 4456234, issued December 24, 2013. Serial No. 87451192 3 proximity to a provider of transportation or a person needing transportation using GPS data, for estimated arrival time, for matching transportation providers with individuals needing transportation, for optimizing the routing of vehicles along a series of waypoints en route to a destination, and for tracking user savings from carpooling of time, money and carbon emissions” in International Class 9.4 After the refusal became final, Applicant appealed and Applicant and the Examining Attorney filed briefs. I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered); 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. 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 focus our analysis on the cited registration of HOPON in standard characters (Registration No. 4732315), because if we find confusion likely between that cited 4 Registration No. 4672545, issued January 13, 2015. This registration also includes services in International Class 42, but the refusal is based only on the Class 9 goods. This registration and Registration No. 4456234 are commonly owned. Serial No. 87451192 4 mark and Applicant’s mark, we need not consider the likelihood of confusion between Applicant’s mark and the other cited marks, while if we find no likelihood of confusion between Applicant’s mark and HOPON, we would not find confusion between Applicant’s mark and the other cited marks. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). A. Similarity of the Marks The marks are identical in appearance, sound, meaning and overall commercial impression. Applicant does not argue or provide any evidence to the contrary. This factor not only weighs heavily in favor of finding a likelihood of confusion, but also reduces the degree of similarity between the goods required to support a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Ent. Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). B. Goods, Channels of Trade and Classes of Consumers As for the goods, Applicant and Registrant both offer or intend to offer “computer software.” Applicant’s software is for, among other things, “engaging and coordinating transportation services,” while Registrant’s is for, among other things, “socially arranging and coordinating travel arrangements for individuals and groups.” These goods are legally identical because Applicant’s “engaging and coordinating transportation services” encompasses Registrant’s “socially arranging and coordinating travel arrangements for individuals and groups.” Indeed, “transportation” is defined as “means of conveyance or travel from one place to Serial No. 87451192 5 another.” October 24, 2017 Office Action TSDR 15 (printout from “merriam- webster.com”) (emphasis added). While Registrant’s software “socially” arranges and coordinates travel arrangements “for individuals and groups,” Applicant’s software “for engaging and coordinating transportation services,” as identified in the application, is unlimited. That is, Applicant’s software, as identified, includes software “for engaging and coordinating transportation services” in any manner, including “socially.”5 Similarly, Applicant’s software is not limited to any type of customer, and as identified it necessarily encompasses software “for engaging and coordinating transportation” for “individuals and groups,” as well as for other types of customers. In short, we must presume that Applicant’s software could include “socially” engaging and coordinating transportation services, and that the software could engage and coordinate transportation services “for individuals and groups.” We need not go beyond our finding that Applicant’s and Registrant’s goods are legally identical in part. It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of goods in a particular class. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 5 There is no evidence regarding what “socially” means in the context of the cited Registrant’s goods, but for purposes of this decision that type of evidence is unnecessary. Whatever the term “socially” means in Registrant’s identification, the point is that it is encompassed by Applicant’s unlimited identification of software for “engaging and coordinating transportation services.” Serial No. 87451192 6 209 USPQ 986 (CCPA 1981). This factor therefore also weighs in favor of finding a likelihood of confusion.6 As for the channels of trade and classes of consumers, where, as here, Applicant’s and Registrant’s goods are legally identical in part, we must presume that the channels of trade and classes of purchasers for those goods are also the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). These factors also weigh in favor of finding a likelihood of confusion.7 6 Even if the goods are not legally identical in-part, they are at the very least highly similar, given the close relationship between “transportation” and “travel,” and the fact that travel generally involves transportation and vice versa. 7 Even if the goods are merely similar, the channels of trade and classes of consumers still overlap. Indeed, as identified Applicant’s software is unlimited as to either channels of trade or classes of consumers. Therefore, we must presume that Applicant’s software for engaging and coordinating transportation moves in the same channels of trade to the same classes of purchasers as Registrant’s software for socially arranging and coordinating travel arrangements for individuals and groups. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“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.’”); 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) (goods presumed to be “offered in all channels of trade which would be normal therefor”); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Serial No. 87451192 7 C. Number and Nature of Similar Marks in Use on Similar Goods Applicant relies on third-party applications and registrations in an attempt to establish that the cited mark is commercially weak based on third-party use of similar marks for similar goods. 5 TTABVUE 12-14; December 1, 2017 Office Action response TSDR 18-51. The evidence is unavailing. Generally, “third-party registrations are not evidence of third-party use of the registered marks in the marketplace, for purposes of the sixth du Pont factor.” In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (citing Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009). See also AMF Inc. v. Am. Leisure Prods., 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.”). While there are cases in which a significantly larger number of “live” third-party registrations can suggest commercial weakness, the relatively small number of active third-party registrations Applicant submitted in this case is not nearly sufficient. In re Inn at St. Johns, LLC, 126 USPQ2d 1742, 1745-46 (TTAB 2018); In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1746 n.8 (TTAB 2016). Cf. 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) (finding that Board “too quickly” dismissed “extensive evidence of third-party registrations” and third-party Serial No. 87451192 8 uses of similar marks) (emphasis supplied) and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015). This factor is neutral.8 II. Conclusion The marks are identical, the goods are legally identical and the channels of trade and classes of consumers overlap. Therefore, confusion is likely. Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed. 8 Of the 13 live registrations Applicant relies upon, six are mere variations of other marks among the 13, and have the same owner, meaning there are at best seven owners of “third- party” registered marks of record which contain the term HOP. This is substantially less than in Juice Generation or Jack Wolfskin. In any event, each of the 13 live registrations are for marks dissimilar to HOPON, or are for goods or services unrelated to those at issue here, or both, and thus irrelevant. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017) (“Symbolic has not pointed to any record evidence to support a finding that multiple third parties use the mark I AM for the listed goods in its class 3 and 9 applications.”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) (“The relevant du Pont inquiry is ‘[t]he number and nature of similar marks in use on similar goods’ … It is less relevant that ‘Century is used on unrelated goods or services such as ‘Century Dental Centers’ or ‘Century Seafoods.’”) (quoting Weiss Assocs. v. HRL Assocs., 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990)); In re Inn at St. Johns, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018). The 11 mere applications upon which Applicant relies, whether “live” or “dead,” are also irrelevant. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007). Similarly, the nine cancelled or expired registrations upon which Applicant relies have no probative value other than to show that the registration once issued. Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“a cancelled registration does not provide constructive notice of anything.”); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987).