Haze Tobacco, LLC

Trademark Trial and Appeal BoardSep 13, 2013

No. 85409707 (T.T.A.B. Sep. 13, 2013)

Mailed: September 13, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re Haze Tobacco, LLC ———— Application No. 85409707 Filed: August 29, 2011 ———— John S. Egbert, Egbert Law Offices PLLC, for applicant. Emily Chuo, Trademark Examining Attorney, Law Office 101, Ronald R. Sussman, Managing Attorney. ———— Before Mermelstein, Wolfson, and Hightower, Administrative Trademark Judges. Opinion by Mermelstein, Administrative Trademark Judge: Alleging an intent to use the mark in commerce, applicant seeks registration of HAZE HOOKAH LOUNGE (in standard characters; HOOKAH LOUNGE dis- claimed) on the Principal Register for “hookah lounge services” in International Class 41. Registration has been finally refused in view of the previously registered mark HAZE NIGHTCLUB (in standard characters; NIGHTCLUB disclaimed) for “nightclub services” in International Class 41, and “bar and cocktail lounge ser- vices” in International Class 43.1 The examining attorney maintains that use of ap- plicant’s mark in connection with the identified services would cause a likelihood of confusion with the mark in the cited prior registration. Trademark Act § 2(d); 15 1 Reg. No. 3,811,320, issued June 29, 2010, based on an application filed September 17, 2007, alleging first use and use in commerce as of December 24, 2009. This Opinion is Not a Precedent of the TTAB Application No. 85409707 2 U.S.C. § 1052(d). Applicant appeals2 from the final refusal to register. We affirm. I. Applicable Law — Likelihood of Confusion Our determination under Trademark Act § 2(d) is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Ma- jestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental in- quiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). II. Discussion A. The Similarity or Dissimilarity of the Marks in Their Entireties In comparing the marks at issue, we consider their appearance, sound, mean- ing, and commercial impression. While we must consider the marks in their entire- ties, it is entirely appropriate to accord greater importance to the more distinctive elements in the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 2 Applicant’s motion to file a substitute reply brief is granted. Application No. 85409707 3 (Fed. Cir. 1985). Applicant’s mark is HAZE HOOKAH LOUNGE, while the mark in the cited registration is HAZE NIGHTCLUB. The (at-least) descriptive terms HOOKAH LOUNGE and NIGHTCLUB have been disclaimed3 in the respective application and registration. While descriptive, generic, or otherwise disclaimed matter is not removed from the mark, and we must consider the marks in their entireties, the “descriptive component of a mark may be given little weight in reaching a conclu- sion on the likelihood of confusion.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting Nat’l Data Corp., 224 USPQ at 752 (Fed. Cir. 1985)). See also In re N.A.D. Inc., 57 USPQ2d 1872, 1873‒74 (TTAB 2000) (“[t]hese descriptive, if not generic, words have little or no source-indicating signifi- cance”). So although these terms are part of the respective marks, they are extreme- ly weak; in other words, they have little or no capacity to identify the source of the identified services or distinguish them from one another. Citing a dictionary entry of haze as variously meaning a “lack of transparency in the air” or “vagueness of mind or mental perception,” applicant urges that the term HAZE in its mark is suggestive of a lounge suffused with the smoke of bub- bling hookahs, while the same word in the cited registration instead suggests the 3 A disclaimer is a concession that the disclaimed term is at least descriptive of the identi- fied goods. See Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 543 (TTAB 1983). We need not engage in a detailed analysis of the degree of descriptiveness of these marks, but suffice it to say that it is hard to escape the conclusion that “HOOKAH LOUNGE” in applicant’s mark is generic for the identified “hookah lounge services” and that “NIGHTCLUB” in the cited registration is generic for the identified “nightclub ser- vices.” Application No. 85409707 4 “alter[ed] . . . mental perceptions” of nightclub revelers. App. Br. at 6–8, citing MERRIAM-WEBSTER haze (no date or URL specified4) (Resp. to Office Action June 18, 2012). Although the connotation of haze applicant attributes to its own mark (the smoky hookah lounge theory) seems more plausible to us than that attributed to the cited mark, it would be incorrect to saythat either of these suggestive conno- tations are really so different as to distinguish these marks. There is nothing in this record to suggest that a nightclub could not be hazy with smoke,5 or that those en- joying the smoke or other pleasures of a hookah lounge (as will be seen, many hook- ah lounges offer services similar to nightclubs) could not experience the “vagueness of mind or mental perception” applicant attributes to those who frequent nightclubs. Indeed, the dictionary entry which applicant cites shows that these two senses of the word are closely related: haze can mean “vagueness of mind. . .” precisely be- cause that mental state is “something suggesting atmospheric haze.” Id. We further note that “HAZE” is the first word in both marks. It is often said that consumers are more likely to notice and remember the first word of a com- pound mark. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 4 Pages printed from web sites should bear both the URL and the date on which the page was downloaded or printed. See In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013); TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 710 (April 2013). But the ex- amining attorney has not objected, so we will consider the evidence. 5 One record source indicates that some hookah lounges use an herbal tobacco substitute to skirt the prohibition or control of public tobacco use in some states. Wikipedia, Hookah lounge (http://en.wikipedia.org/wiki/Hookah lounge (Dec. 19, 2011) (Office Action Dec. 19, 2011). While a survey of state tobacco laws is beyond the scope of this decision, it seems likely that nightclubs could take advantage of the same laws to allow their customers to smoke. Application No. 85409707 5 1772, 73 USPQ2d at 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). We conclude that “HAZE” is the dominant part of the marks at issue, and that its use as a common, first term in both marks renders them highly similar. The marks both begin with the same word, having the identical appearance,6 sound, and a similar or overlapping connotation, followed by the generic name for the identified service. Although HAZE might possibly be characterized as slightly suggestive, it is clearly not descriptive or generic for the identified services. Applicant suggests that the examining attorney’s focus on HAZE as the domi- nant part of both marks results in an impermissible dissection of the mark. App. Br. at 3. We disagree. As the Court of Appeals for the Federal Circuit has noted, in articulating reasons for reaching a conclusion on the is- sue 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 ulti- mate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Of course we recognize the obvious: Although they both start with HAZE, the marks at issue are clearly not identical. The additional words, HOOKAH LOUNGE and NIGHTCLUB, do not look alike or sound alike, nor do they mean 6 Both marks are depicted in standard characters, and so neither is limited to any particu- lar display. The marks could thus be used in any font, size, or color, or indeed, in the same font, size, and color. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258‒59 (Fed. Cir. 2011). Application No. 85409707 6 the same thing, although as we will see, nightclubs and hookah lounges are related. Those words provide some difference in the overall appearance, sound, and meaning of the marks at issue. But marks need not be identical in order to find a likelihood of confusion; they need only be similar in such a way that consumers seeing them used in connection with their respective services might be confused or mistaken as to the source of those services.7 As we have explained, the marks in this case differ only in their highly descrip- tive or generic wording, and it is hornbook law that such terms are rarely signifi- cant in distinguishing marks or identifying source, and potential purchasers are un- likely to look to such words to determine the source of the services. So while the words HOOKAH LOUNGE and NIGHTCLUB clearly remain part of their respec- tive marks, these highly descriptive terms do not change our view that these marks are highly similar when considered in their entireties. B. The Similarity or Dissimilarity and Nature of the Goods or Services According to its application, applicant intends to use its mark on “hookah 7 The confusion addressed by Trademark Act § 2(d) is confusion as to the source of goods or services. To support her refusal, the examining attorney need not show that customers will be unable to distinguish the marks from each other or be unable to tell the goods or services apart. It would be enough, for instance, if the evidence were sufficient to infer that custom- ers are likely to mistakenly believe that hookah lounge services offered under the HAZE HOOKAH LOUNGE mark are offered by the same source as that which offers nightclub services under the HAZE NIGHTCLUB trademark, or that they would believe that one is in some way affiliated with or sponsored by the other. “The issue under § 2(d) is not wheth- er people will confuse the marks but whether the marks will confuse people.” In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558, 559 (CCPA 1972) (citing Columbian Steel Tank Co. v. Union Tank and Supply Co., 277 F.2d 192, 125 USPQ 406, 409 (CCPA 1960)). Application No. 85409707 7 lounge services,” while the services recited in the cited registration are “nightclub services.” Applicant contends that these services differ significantly, App. Br. at 8‒9, and the examining attorney disagrees. We begin with some definitions. For the uninitiated, a hookah is “a tobacco pipe of Near Eastern origin with a long, flexible tube by which the smoke is drawn through a jar of water and thus cooled.” DICTIONARY.COM UNABRIDGED (based on the RANDOM HOUSE DICTIONARY (2013)) (http:// dictionary.reference.com/ browse/ hookah (visited Sept. 3, 2013)). We also note that a nightclub is: “an establishment for even- ing entertainment, generally open until the early morning, that serves liquor and usually food and offers patrons music, comedy acts, a floor show, or dancing; night- spot.” DICTIONARY.COM UNABRIDGED (based on the RANDOM HOUSE DICTIONARY (2013)) (http://dictionary. reference. com/ browse/ nightclub (visited Sept. 3, 2013)).8 The evidence of record indicates that a “hookah lounge” is a commercial estab- lishment in which patrons can relax and smoke a hookah. Hookah lounges typically offer refreshments such as light food or coffee, Wikipedia, Hookah lounge (http:// en. wikipedia. org/ wiki/ Hookah_ lounge (Dec. 19, 2011)), while a number of the internet pages made of record by the examining attorney indicate that many offer heartier fare and alcoholic drinks.9 Some hookah lounges feature entertainment such as bel- 8 We take judicial notice of both definitions. The Board may take judicial notice of diction- ary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online diction- aries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 9 The examining attorney submitted the following webpages, advertising hookah lounges (continued...) Application No. 85409707 8 ly dancing10 or provide a dance floor and music for patrons to dance to.11 Applicant argues that the cited registrant’s services are “extremely narrow”; that “[c]ustomers attending a nightclub will expect to listen to music, dance, and drink”; and that “the focus of a lounge is on lounging, as opposed to a nightclub’s dance floor.” App. Br. at 8‒9. Nonetheless, the examining attorney’s evidence clearly shows that there are many similarities between a hookah lounge and a nightclub, and that in reality, the two overlap substantially. Like nightclubs, the evidence which offer food and alcoholic beverages: Hookah Lounge, http://hookahlounge.com/index. php?/ menus/ specialty_ cocktails/54 (Dec. 19, 2011) (cocktail menu); Tangier Lounge, http:// tangierloungedc/ com/# (Dec. 19, 2011) (offering “Moroccan inspired cuisine and drinks”); Fire N Ice, http://www. firenicenj. com/ restaurant. php (Dec. 19, 2011) (advertising “signature cocktails” and “Indian, Mediterranean, and Indo-chinese cuisine[ ]”); Legacy Hookah Lounge & Nightclub, http://www. facebook. com/pages/Legacy-Hookah-Lounge-Nightclub/ 161886787247923 (July 9, 2012) (commenter: “awesome food”); Mangos Hookah Bar and Night Club, http:// www . facebook. com/ pages/ Mangos- Hookah-Bar-and-Night-Club/ 223113731119304 (July 9, 2012) (featuring a “late night restaurant”; The Hookah, http:// hookah- club.com/menu/drink-menu/ # menuPost (July 9, 2012) (“specialty drinks”); Narain Nightclub and Hookah Lounge, http:// www. clubplanet. com/ Venues/ 132993/ Marina-Dl-Rey/ Narain-Nightclub- and-Hookah-Lounge (July 9, 2012) (described as “Bar, Club, Lounge, Neighborhood Restaurant/Bar”) Babylon Hookah Lounge/ Nightclub, http:// foursquare. com/v/ babylon- hookah- lounge-- nightclub / 4dc725B01f6e143b8a4056b4 (July 9, 2012) (com- ments include: “This place is amazing! I’m here ev ery night and I have a blast. The hookah is really good! The atmosphere is very friendly and the music is so good that u can dance the whole night”). 10 The following two hookah lounge websites advertise their provision of entertainment or shows: Tangier Lounge (comment: “Good crowd tonight watching some belly dancing”); Six Lounge Hookah Lounge Nightclub Smoke Shop, http://www.thesixlounge.com/1.html (July 9, 2012) (offering unspecified “Performances”). 11 These web pages in the record show hookah lounges which offer dancing: Legacy Hookah Lounge & Nightclub, (one comment says: “this just in!!! DJ BlackRabbit will be playing at Legacy Hooka...”); Mangos Hookah Bar and Night Club, (comments include: “just want to remind everyone that tonight is dance till you drop with Broly STVX and Dj Synaptik” and “Come out to Mangos Hookah Bar and Nightclub and enjoy great music and hookah”); Bab- ylon Hookah Lounge/ Nightclub, (comments include: “The atmosphere is very friendly and the music is so good that u can dance the whole night”); Six Lounge Hookah Lounge Night- club Smoke Shop, (offering “Live DJ’S” [sic]); Narain Nightclub and Hookah Lounge, (offer- ing dancing and food available until midnight). Application No. 85409707 9 shows that many hookah lounges are open late, offer music, food and alcoholic drinks, promote dancing by their patrons or feature shows. In fact, the examining attorney’s evidence shows that a number of establishments include both hookah lounge and nightclub in their business name.12 We find that applicant’s hookah lounge services are closely related to the night- club services recited in the prior registration, and that the two services are identical in part. C. Channels of Trade and Classes of Customers Because it appears that there is substantial overlap between “hookah lounge services” and “nightclub services,” we further find that applicant’s customers and channels of trade are identical, at least in part. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally iden- tical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”); see In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels 12 The record website evidence indicates that each of these establishments includes both “hookah lounge” and “nightclub” in its name: Legacy Hookah Lounge & Nightclub; Mangos Hookah Bar and Night Club; Babylon Hookah Lounge/ Nightclub; Six Lounge Hookah Lounge Nightclub Smoke Shop; Narain Nightclub and Hookah Lounge. Application No. 85409707 10 of trade and classes of consumers, the Board was entitled to rely on this legal pre- sumption in determining likelihood of confusion). Nonetheless, applicant argues that “customers are unlikely to encounter the services of both [a]pplicant and the cited registrant at the same time, location, or event.” App. Br. at 9. If applicant’s point is that it is unlikely to open a hookah lounge next to the registrant’s nightclub (or vice versa), the argument is irrelevant. Applicant has applied for an unrestricted registration which is national in scope, Trademark Act § 7(c), and neither applicant nor the cited registrant are limited to conducting business in their current location. Registration must therefore be re- fused if applicant’s use of its mark on the identified services would lead to a likeli- hood of confusion anywhere in the United States. See In re ALP of South Beach Inc., 79 USPQ2d 1009, 1011‒12 (TTAB 2006) (“applicant would clearly not be limited to the two establishments it currently operates”). Therefore, regardless of the actual current location of applicant’s business and that of the cited registrant, our analysis must assume that the same customers could encounter businesses in close proximi- ty, using the marks at issue in connection with the respective services. III. Conclusion We have carefully considered all of the arguments and evidence of record, in- cluding any we have not specifically discussed. We have found that applicant’s mark is highly similar to the mark in the cited registration; that applicant’s hookah lounge services are closely related and in-part identical to nightclub services; and that such services may be provided to the same consumers in similar establish- ments in the same geographical area. These factors all favor affirmance of the ex- Application No. 85409707 11 amining attorney’s refusal to register. We conclude that consumers familiar with the prior registrant’s HAZE NIGHTCLUB mark used in connection with nightclub services would be likely, when encountering applicant’s HAZE HOOKAH LOUNGE mark used to identify hookah lounge services, to be confused or mistaken as to their source or affiliation. Trademark Act § 2(d). Decision: The refusal to register is AFFIRMED and registration to applicant is re- fused.