Hi Puppy, Inc.

Trademark Trial and Appeal BoardFeb 14, 2020

87426343 (T.T.A.B. Feb. 14, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: February 14, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Hi Puppy, Inc. _____ Serial No. 87426343 _____ Pejman Yedidsion of Brooks Acordia IP Law PC, for Hi Puppy, Inc. Tracy Fletcher, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Zervas, Taylor and Shaw, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Hi Puppy, Inc. (“Applicant”) seeks registration on the Principal Register of the mark HIPUPPY (in standard characters) for Beanies; Hats; Hoodies; Jackets; Jackets for women, men, and children; Pants; Pants for women, men, and children; Sweatpants; Sweatpants for women, men, and children; Sweatshirts; Sweatshirts for women, men, and children; T- shirts; T-shirts for women, men, and children; Tank tops; Hooded sweatshirts; Hooded sweatshirts for women, men, and children; Yoga pants in International Class 25.1 1 Application Serial No. 87426343 was filed on April 26, 2017 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use of the mark Serial No. 87426343 - 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), based on likelihood of confusion with the mark in Registration No. 5357358,2 Hi Puppy and design, shown below, for, among other goods and services, the following Class 25 goods: Clothing for men, women and children, namely, socks, stockings, jeans, trousers, breeches for wear, leggings being trousers, boxer shorts, combinations, suits, skirts, petticoats, dresses, dressing gowns, blouses, shirts, tee- shirts, sweaters, pullovers, vests, jerseys being clothing, cardigans, shawls, scarves, neckties, gloves being clothing, belts being clothing, suspenders, panties, coats, waistcoats, overcoats, raincoats, parkas, ponchos, pelerines, cloaks, saris, jackets being clothing, overalls, pockets for clothing, collars being clothing, nightwear, lingerie, underwear, bathing suits, bath robes, masquerade costumes, fur stoles, footwear, headwear. anywhere on September 1, 2013 and first use of the mark in commerce since at least as early as September 28, 2013. 2 Issued December 19, 2017. The registration includes the following description: “The mark consists of the wording ‘HI PUPPY’ in stylized font beneath a design of a puppy’s head wearing a bow tie.” Color is not claimed as a feature of the mark. Serial No. 87426343 - 3 - When the refusal was made final, Applicant appealed and requested reconsideration. The Examining Attorney denied the request for reconsideration and the appeal resumed. We affirm the refusal to register. I. Applicable Law Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C. § 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all probative facts in the record that are relevant to the likelihood of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). 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 (CCPA 1976). We discuss below these and other relevant factors. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within DuPont list, only factors that are “relevant and of record” need be considered). II. The Goods/Channels of Trade/Classes of Purchasers We first consider the second and third DuPont factors involving the relatedness of the goods, the channels of trade and classes of purchasers. In making our determination regarding the relatedness of the goods, we must look to the goods as identified in the application and the cited registration. See Stone Lion Capital Serial No. 87426343 - 4 - Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Where the goods in an application or cited registration are broadly described, such that there are no restrictions as to trade channels and purchasers, it is presumed that the recitation of goods encompass not only all goods of the nature and type described therein, but that the identified goods are provided in all channels of trade which would be normal therefor, and that they would be purchased by all potential customers thereof. See, e.g., In re Elbaum, 211 USPQ 639 (TTAB 1981). As identified, Applicant’s broadly worded “pants” encompass Applicant’s more narrowly identified “Clothing for men, women and children, namely, … jeans, trousers, breeches for wear, leggings being trousers.” Thus, for purposes of our likelihood of confusion analysis, we find these goods to be legally identical. We also find Applicant’s identified “Clothing for men, women and children, namely, … “T- shirts; [and] T-shirts for women, men and children be identical to Registrant’s identified tee shirts, notwithstanding the difference in spelling.3 3 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE lists the word(s) T-shirt also tee shirt, which it defines as “[a] short-sleeved, pullover shirt with no collar.” www.ahdictionary.com/word/search.html?q=T-shirt, retrieved January 27, 2020. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or have regular fixed editions. 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); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 87426343 - 5 - It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application. In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007). In addition, to support the Examining Attorney made of record web pages from the websites of Lands’ End,4 REI,5 L.L.Bean6 and Talbots,7 showing the same mark used in connection with a one or more of the clothing items identified in both Applicant’s application and the cited registration. We thus find the goods identical in part and otherwise related. Applicant’s argument that “the services of the Applicant’s mark are not competitive with the services of the Cited marks,”8 is unavailing. As stated, in evaluating the relatedness of the goods, we must look to the goods as identified in the subject application and cited registration. See Octocom, 16 USPQ2d at 1787. Moreover, given the in-part legal identity of the goods, we must presume that they would be offered in the same trade channels for such goods, such as online and brick 4 May 18, 2018 Office Action; TSDR 13-22. The TSDR citations are to the downloadable .pdf format 5 Id. at TSDR 23-27. 6 November 18, 2018 Final Office Action; TSDR 5-7. 7 Id. at TSDR 8-12. 8 9 TTABVUE 10. We find Applicant’s reference to “services” to be a typographical error, and consider Applicant’s argument relative to the respective identified goods. Serial No. 87426343 - 6 - and mortar sporting goods and clothing stores, and to the same classes of purchasers, including ordinary consumers seeking clothing items. In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). See also 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). We accordingly find the channels of trade and the classes of consumers to overlap. The second and third DuPont factors favor a finding of likelihood of confusion. III. The Marks We now consider the DuPont likelihood of confusion factor of the similarity or dissimilarity of the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In comparing the marks, we are mindful that “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently 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); see also San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., Serial No. 87426343 - 7 - 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, our analysis cannot be predicated on dissecting 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. Applicant’s mark is HIPUPPY (standard characters) and the cited mark is Hi Puppy and design, . Applicant argues that its mark and the cited mark “do Serial No. 87426343 - 8 - not have similarity of appearance.”9 We disagree and find those marks similar in appearance, sound and connotation. Both marks include as the only or dominant element the wording Hi Puppy or HIPUPPY. The presence or absence of a space does not significantly distinguish the commercial impression of these terms because consumers will still recognize the individual components. See, e.g., In re Iolo Tech., LLC, 95 USPQ2d 1498 (TTAB 2010) (difference between ACTIVECARE and ACTIVE CARE has no trademark significance); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1025 (TTAB 2009) (finding that DESIGNED TO SELL creates the same commercial impression as DESIGNED2SELL). Likewise, the design element of Registrant’s composite mark, which is described in the registration as “a puppy’s head wearing a bow tie” fails to distinguish Registrant’s mark from Applicant’s. Where both words and a design comprise a mark, the words are normally accorded greater weight because they are, as opposed to the design as Applicant suggests, more likely to make an impression upon purchasers, would be remembered by them, and would be used by them to call for the goods. In re Viterra Inc., 101 USPQ2d at 1908, citing CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“[I]n a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.”). Moreover, while the puppy head design which, as Applicant notes, makes up a large percentage of the cited mark, is clearly noticeable 9 Id. at 6. Serial No. 87426343 - 9 - and a prominent part of Registrant’s mark, it merely reinforces the connotation imparted by the word PUPPY in Registrant’s mark. As we acknowledged, the puppy head design is a prominent portion of the cited mark. However, that the design includes a bow tie rather than a collar does not make it a more significant component of the cited mark or alter the commercial impression of the design which, as just stated, merely reinforces the word PUPPY.10 To the extent the wording HIPUPPY or Hi Puppy has any meaning at all, given the in-part identity of goods and the otherwise related clothing items, that meaning would be the same. We recognize that in comparing the marks, we must consider Applicant’s and Registrant’s marks in their entireties, not merely the dominant portions. Thus, we have taken into account all of the differences in appearance and sound between them. We find that despite these differences, given the similarities between the marks in sound, appearance and meaning due to the shared term HIPUPPY (Hi Puppy), the marks engender very similar overall commercial impressions. This DuPont factor favors a finding of likelihood of confusion. 10 Applicant relies a number of decisions where the Board found no likelihood of confusion despite sharing common elements. It has been noted many times, however, that each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”); and In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). For the reasons explained in this decision, we find Applicant’s mark similar to the cited mark and confusion to be likely. Serial No. 87426343 - 10 - IV. Conditions of Sale/Sophistication of Purchasers Applicant argues, without support, that confusion is not likely because individuals seeking both Applicant’s and Registrant’s clothing are “careful [and] sophisticated” and “unlikely to seek goods without detailed research.”11 We find this argument unavailing. There is no evidence to suggest that either Applicant’s or Registrant’s goods are expensive or of the sort that are likely to be purchased only after careful consideration by sophisticated consumers. Nor are there any trade channel, price, or similar limitations in either Applicant’s or Registrant’s identification of goods. Accordingly, we must presume both Applicant’s and Registrant’s goods as identified encompass both expensive and inexpensive clothing, and are likely to be purchased not only by sophisticated consumers who may exercise some degree of care, but also by ordinary and unsophisticated consumers. See Stone Lion, 110 USPQ2d at 1163-64 (recognizing Board precedent requiring consideration of the “least sophisticated consumer in the class”). We find that the conditions under which sales are made are neutral. V. Conclusion When we consider all of the arguments and evidence relating to the relevant likelihood of confusion factors, we find that confusion is likely between Applicant’s mark HIPUPPY and the cited registered mark Hi Puppy and design. We find so 11 9 TTABVUE 11 (Applicant’s br. p. 11). Serial No. 87426343 - 11 - principally due to the similarity of the marks, the in-part identical and otherwise related goods, and the presumed overlap in trade channels and purchasers. Decision: The refusal to register Applicant’s mark HIPUPPY under Section 2(d) of the Trademark Act is affirmed.