Haley Strategic Partners, LLC

Trademark Trial and Appeal BoardOct 13, 2017

No. 86581844 (T.T.A.B. Oct. 13, 2017)

This Opinion is not a Precedent of the TTAB Mailed: October 13, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Haley Strategic Partners, LLC _____ Serial No. 86581844 _____ Justin Johanson of Griffiths & Seaton, for Haley Strategic Partners, LLC. J. Brendan Regan, Trademark Examining Attorney, Law Office 113, Odette Bonnet, Managing Attorney. _____ Before Quinn, Masiello and Goodman, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: Haley Strategic Partners, LLC (“Applicant”) seeks registration on the Principal Register of the design mark shown below for Baseball caps and hats; Beanies; Belts; Bottoms; Hats; Hooded sweatshirts; Hoods; Jackets; Short-sleeved or long- sleeved t-shirts; Sweatshirts; T-shirts; Tops; Wearable garments and clothing, namely, shirts in International Class 25.1 1 Application Serial No. 86581844 was filed on March 31, 2015, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as January 11, 2011. The description of the mark is as follows: “the mark consists of a stylized design of a dragon fly Serial No. 86581844 - 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 so resembles the previously registered mark DRAGONFLY (standard characters) for “Clothing, namely, shirts, pants, short pants, socks, hats, sweatshirts, coats and jackets” in International Class 25 as to be likely to cause confusion, mistake, or deception.2 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 flying above and partially within a rectangular shaped window having a partially cut corner.” Color is not claimed as a feature of the mark. 2 Registration No. 3511173, issued October 17, 2008; Section 8 accepted; Section 15 acknowledged. Serial No. 86581844 - 3 - (CCPA 1973). See also In re Majestic Distilling Co., Inc., 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 (CCPA 1976). These factors, and the other relevant du Pont factors now before us, are discussed below. A. The similarity or dissimilarity of the goods and established, likely-to- continue, trade channels We turn first to the goods. As identified, many of Registrant’s and Applicant’s goods are identical or legally identical. Both Applicant and Registrant offer “hats, jackets, shirts, and sweatshirts.” Applicant’s “bottoms” are broad enough to encompass Registrant’s more specifically identified “pants” and “short pants” and Registrant’s “shirts” encompass Applicant’s more specifically identified “short- sleeved or long-sleeved t-shirts, and T-shirts.” In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). The fact that there are some differences in the description of goods for the application and cited registration does not obviate the fact that the descriptions of goods are in part identical or legally identical. Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any items that come within the identification of goods in the application); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“[I]t is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application.”) Serial No. 86581844 - 4 - . Because the identifications of goods in the application and cited registration are identical in part and legally identical in part and unrestricted as to trade channels, we must presume that Applicant’s and Registrant’s goods travel in the same ordinary trade and distribution channels and will be marketed to the same potential consumers. 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); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (finding goods, which were in part identical and in part related, as being offered and sold to the same classes of purchasers and channels of trade). Absent restrictions in the identification of goods, Applicant’s arguments that its goods are “operational related products, gear, and accessories” for “military and private sector tactical instruction, home defense training,” and that its purchasers “are those specifically interested in military/police tactics, survival and deception skills, weapons and accessories, and/or personal and home defense,” 7 TTABVUE 16-17, are unavailing. These limitations on the nature of the goods do not appear in the application’s identification of goods, and we must interpret the identification as encompassing all goods of the type described. Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); Octocom Serial No. 86581844 - 5 - Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). These du Pont factors favor a finding of likelihood of confusion. B. The similarities or dissimilarities between the marks in their entireties, in terms of appearance, sound, connotation and commercial impression We analyze “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 focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Johann Maria Farina Gegenuber Dem Julichs-Platz v. Chesebrough- Pond, Inc., 470 F.2d 1385, 176 USPQ 199, 200 (CCPA 1972); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Applicant’s mark is and Registrant’s mark is DRAGONFLY. Under the doctrine of “legal equivalents,” we may find a picture or design and the word that describes the picture or design to be confusingly similar. This doctrine is based on a recognition that a pictorial depiction and equivalent wording are likely to impress the same mental image on a purchaser. See Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA 1963) (representation of man wearing kilts and tam and word “SCOTCHMAN”); In re Rolf Nilsson AB, 230 USPQ 141, 142 (TTAB 1986) Serial No. 86581844 - 6 - (Lion’s head design and “LION” word mark found confusingly similar), citing In re Serac, Inc. 218 USPQ 340, 341 (TTAB 1983) (“[I]t is well settled that a picture and the word that describes that picture are given the same significance in determining likelihood of confusion.”); In re Duofold Inc., 184 USPQ 638, 639-40 (TTAB 1974) (design of golden eagle and words “GOLDEN EAGLE” confusingly similar). We must decide whether Applicant’s design mark is in essence a legal equivalent of Registrant’s DRAGONFLY mark, keeping in mind that, “[w]hen marks would appear on virtually identical goods or services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Applicant argues that the Examining Attorney has failed to take into consideration the actual design of the Applicant’s mark, improperly dissecting the design by “summarily dismiss[ing] the rectangular shaped window with a cut corner (which consumes a portion of the partial dragonfly)” and applying the doctrine of legal equivalents to a restricted portion of the design, the dragonfly image. 7 TTABVUE 8- 9. Applicant submits there is no dominant element in the design, and the elements of the design must be considered as a whole. Applicant also argues that its design does not call to mind the same mental image of a dragonfly because in the design, the dragonfly is “only a partial dragonfly” that is “flying above and partially within a rectangular shaped window that “‘hides and consumes the wings of the dragonfly.’” 7 TTABVUE 8-9, 14. The Examining Attorney, on the other hand, argues that Serial No. 86581844 - 7 - “because of the indeterminate nature of the non-dragonfly element, the immediately recognizable dragonfly element would be the (only) element that” would make a mental impression on consumers. 9 TTABVUE 9. First, comparing Applicant’s mark to the cited mark with regard to appearance, it is readily apparent that the two marks do not look the same as Registrant’s mark is a standard character word mark, with no design, and Applicant’s mark consists solely of a design. In terms of sound, word marks are verbalized while design marks are generally not verbalized, so the respective marks are dissimilar in sound. As to the overall commercial impression engendered by the respective marks, we find that both marks create the impression of a dragonfly; we think it unlikely that the consumer will form a mental image of a “partial dragonfly,” as Applicant suggests. While we recognize that the dragonfly in Applicant’s mark is partially enclosed in a thin rectangle with one “cut” or notched corner, we find that the addition of an imperfect rectangle does not alter the meaning and connotation of the mark which is a dragonfly. A rectangle is a common geometric shape, often used as a border or frame or background carrier, and in this case, merely draws the eye to the dragonfly. Thus, due to the commonness of the rectangular shape, the dragonfly is more likely to be relied upon as an indicator of source as it creates a strong impression that is arbitrary as applied to the goods. The same cannot be said for the rectangular shape. We also add that there is no evidence in the record that suggests that the relevant purchasing public would recognize the imperfect rectangle as a window. It is a very abstract shape that equally resembles any other rectangular object. Consumers are not likely Serial No. 86581844 - 8 - to refer to the mark as a “dragonfly flying above and partially within a rectangular shaped window having a partially cut corner” as Applicant contends. In sum, we find that the two marks create highly similar overall commercial impressions. Therefore, the du Pont factor relating to the similarity or dissimilarity of the marks favors a finding of likelihood of confusion. C. The conditions under which and buyers to whom sales are made (i.e., “impulse” vs. careful, sophisticated purchasing) As neither Applicant nor Registrant has restricted its identification of goods to any particular price level, we must presume that both sell their specified clothing products in all of the normal price ranges therefor. Balmain v. Bernstein & Sons Shirt Corp., 223 USPQ 1148, 1149 n.7 (TTAB 1984). The goods, as identified, such as t- shirts, jackets, bottoms and sweatshirts, are ordinary consumer items. Consumers of these ordinary items of clothing are likely to exercise only an ordinary degree of care in their purchasing decisions. In re Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB 2007) (citing Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984)). Applicant argues that clothing consumers are sophisticated and discriminating purchasers who will take sufficient care and time to examine the goods, are “particular about the clothes they buy” and are concerned about “brand, fit, quality, design and trend.” 7 TTABVUE 16. Applicant points to the following in the record, a Georgetown Institute for Consumer Research article titled “Finding the Fiercely Loyal Among the Frequent Buyers” and a recent study from the University of Missouri-Columbia, that states ‘“[m]any consumers buy and wear clothing from Serial No. 86581844 - 9 - prestigious brands as a way to express and distinguish themselves’” as evidence that purchasers of clothing generally exercise substantial care. 5 TTABVUE 17, 19-24 (Request for Reconsideration). Although Applicant provides some evidence regarding the decision process generally for regular buyers of a particular brand and the fiercely loyal brand buyer, this evidence does not discuss ordinary clothing consumers or those not motivated to buy a particular brand that exercise less care in their purchasing decisions. But even assuming, arguendo, that customers for Applicant’s and Registrant’s goods exercise care in their purchasing decisions, “even careful purchasers are not immune from source confusion.” In re Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). We find this du Pont factor neutral. D. Extent of Concurrent Use and Actual Confusion Applicant’s assertion, in an ex parte proceeding, of six years’ contemporaneous use of Applicant’s and Registrant’s marks without actual confusion is entitled to little weight. See In re Majestic Distilling Co., Inc., 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 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). Although Applicant asserts that its goods have been advertised and marketed on the Internet, by word of mouth, and marketed to the military and law enforcement, 7 TTABVUE 17, the record is devoid of probative evidence relating to the extent of use of Registrant’s mark and, thus, whether there Serial No. 86581844 - 10 - have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Applicant also faults the Examining Attorney for failing to introduce evidence of actual confusion between the involved marks. However, evidence of actual confusion is hard to come by and it is not a necessary element for establishing likelihood of confusion within the meaning of Section 2(d). See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990); In re Inspection Technology Inc., 223 USPQ 46, 48 (TTAB 1984) (“Moreover, for the Examining Attorney to attempt to show actual confusion, as suggested by applicant, would be an impossible undertaking.”). Accordingly, we consider this du Pont factor neutral. E. Any Other Probative Fact Under this du Pont factor we consider “any other established fact probative of the effect of use.” du Pont, 177 USPQ 567. This final factor accommodates the need for flexibility in assessing each unique set of facts. Applicant argues that the Office has treated its application inconsistently with a third-party application for the standard character mark DRAGONFLY for Class 9 goods “eyewear, sunglasses” that has been approved for publication.3 However, each application must be considered on its own merits. Even if some other application had characteristics similar to the subject 3 Application Serial No. 86736120 filed by Icon Eyewear, 5 TTABVUE 13-16. Serial No. 86581844 - 11 - application, the allowance of that application does not bind the Board. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009); In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2009)). The treatment of this third-party application for goods different than Applicant’s and Registrant’s goods does not assist us in the likelihood of confusion analysis, and is not “probative of the effect of use” under the thirteenth du Pont factor. This du Pont factor is therefore neutral. II. Conclusion We have considered all of the arguments and evidence of record as they pertain to the du Pont likelihood of confusion factors, even if not discussed herein. To the extent that any other du Pont factors for which no evidence was presented by Applicant or the Examining Attorney may nonetheless be applicable, we treat them as neutral. In light of the foregoing, we find that confusion is likely because the marks are similar, the goods are in part identical and in part legally identical, and we must presume the trade channels and purchasers are the same. Decision: The refusal to register Applicant’s mark is affirmed.