Impending, Inc.

Trademark Trial and Appeal BoardNov 25, 2015

No. 85630250 (T.T.A.B. Nov. 25, 2015)

This Opinion is Not a Precedent of the TTAB Mailed: November 25, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Impending, Inc. _____ Serial No. 85630250 _____ Kevin D. Erickson of Pauley Petersen & Erickson, for Impending, Inc. Kim Teresa Moninghoff, Trademark Examining Attorney, Law Office 113, Odette Bonnet, Managing Attorney. _____ Before Bergsman, Wolfson and Hightower, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Impending, Inc. (“Applicant”) seeks registration on the Principal Register of the mark HATCH (in standard characters) for goods ultimately identified as computer game software for direct download to and use on mobile and cellular phones, namely, virtual pet game software, not for mail order or direct distribution to schools, in International Class 9.1 1 Application Serial No. 85630250 was filed on May 21, 2012, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. Serial No. 85630250 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the mark shown below: for Direct marketing to schools; mail order catalog services and on-line retail store services in the field of computer hardware and software, classroom equipment, classroom furniture, and teaching aids, games, books and educational kits; conducting trade show exhibitions in the field of computer hardware and software, classroom equipment, classroom furniture, and teaching aids, games, books and educational kits, in International Class 35, that, if used in connection with Applicant’s goods, it is likely to cause confusion.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. With its appeal brief, Applicant requested remand, seeking further amendment to the identification of goods. The case was remanded and the Examining Attorney accepted the amendment to the identification but continued the refusal, and the appeal was again resumed. We affirm the refusal to register. 2 Reg. No. 4083311 issued January 10, 2012. The phrase “The Early Learning Experts” has been disclaimed. Serial No. 85630250 - 3 - I. Applicable Law 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 the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (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 or services. 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/or services] and differences in the marks.”). II. Analysis A. The similarity of the marks. We turn first to the du Pont likelihood of confusion factor focusing on “the similarity or dissimilarity of 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 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) Serial No. 85630250 - 4 - (citation omitted); see also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). Because a comparison 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.”). The “touchstone of this factor is consideration of the marks in total.” Jack Wolfskin Ausrustung Fur Draussen GmbH KGAA v. New Millenium Sports, S.L.U., 707 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015). 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, 224 USPQ at 751. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012). Serial No. 85630250 - 5 - As discussed infra, Applicant’s goods are virtual pet game software for use on mobile and cellular phones. The average consumer of Applicant’s goods will have at least some familiarity with mobile and cellular technology. Registrant’s services include online mail order catalog services and on-line retail store services in the field of computer hardware and software, classroom equipment, classroom furniture, and teaching aids, games, books and educational kits; these services are not restricted to specific classes of consumers. Thus, the classes of consumers overlap insofar as both Applicant’s and Registrant’s consumers are likely to include ordinary consumers who may be knowledgeable concerning computer software, including applications on mobile and cellular technology. Applicant’s mark is the word HATCH. The cited mark is the composite mark . Because Applicant’s mark is in standard character form, Applicant could present its mark in a style similar to the registered mark. Marks presented in standard characters are not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording, and not in any particular display. In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). The dominant feature of the cited mark is the word HATCH. The word appears in large letters in front of the design of an egg and is stylized in a bold font. The egg Serial No. 85630250 - 6 - design is mere background design. The additional phrase “The Early Learning Experts” appears in smaller lettering underneath the word “Hatch,” stylized in a less conspicuous font. Moreover, the term “The Early Learning Experts” is used descriptively (and has been disclaimed) to explain that Registrant’s services are educational in nature. We give less weight to descriptive words appearing in marks, as they are less likely to be remembered and used by consumers in calling for or referring to the goods or services. See In re Nat’l Data, 224 USPQ at 751 (stating “[t]hat a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark”); In re Chatam Int’l. Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009). Applicant argues that because its goods are virtual pet game software, its mark “merely implies the emergence of a newborn (i.e., virtual pet) from an egg.”3 Even if the connotation of Applicant’s mark is so circumscribed, a plain reading of the cited mark embraces this meaning due to the egg design and the use of the word “early” in the mark, which reinforce the concept of bringing forth young from an egg. Further, our precedent instructs that adding a term to a shared first or dominant term does not necessarily obviate likelihood of confusion. See, e.g., In re Chatam, 71 USPQ2d at 1947 (finding GASPAR’S ALE and JOSE GASPAR GOLD confusingly similar); Cola-Cola Bottling Co. v. Joseph E. Seagrams & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL and BENGAL LANCER); In re 3 6 TTABVUE 5. Serial No. 85630250 - 7 - U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE). The additional elements in Registrant’s mark, “The Early Learning Experts” and the egg design, do not obviate the similarity between the marks owing to the common element HATCH. The presence of this shared term, and its dominant position in the cited mark, causes the marks to be similar in sight, sound, connotation and overall commercial impression. B. The similarity or dissimilarity and nature of the goods and services; trade channels; classes of consumers. Turning to a consideration of Applicant’s and Registrant’s goods, we note at the outset that where, as here, the marks are extremely similar, “it is only necessary that there be a viable relationship between the goods or services in order to support a holding of likelihood of confusion.” E.I. du Pont de Nemours and Co. v. Sunlyra International Inc., 35 USPQ2d 1787, 19790 (TTAB 1995) (citing In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983)). Applicant is seeking to register its mark for “computer game software for direct download to and use on mobile and cellular phones, namely, virtual pet game software, not for mail order or direct distribution to schools.” The recitation of services in the cited registration includes “on-line retail store services in the field of computer hardware and software, classroom equipment, classroom furniture, and teaching aids, games, books and educational kits.” It is well settled that the question of likelihood of confusion must be determined based on an analysis of the goods or services recited in an applicant’s application vis-à-vis the goods or services identified in the cited Serial No. 85630250 - 8 - registration, because what is in the application will determine the metes and bounds of any registration which issues from it. Cunningham v. Laser Golf Corp., 222 F.3d 943, 948 (Fed. Cir. 2000); see also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993) (“restrictions on how the mark is used will not be inferred”); Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (the application controls “regardless of what the record may reveal as to the particular nature of an applicant’s goods”); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 1 USPQ2d 1813 (Fed. Cir. 1987). If a likelihood of confusion is shown between Applicant’s use of its mark on virtual pet game software and the on-line retail store services in the field of computer hardware and software in Registrant’s identification, there is no need to prove likelihood of confusion with the remaining services recited in Registrant’s identification. Under this du Pont factor, the Examining Attorney need not prove, and we need not find, similarity as to each and every product listed in the description of goods. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007). The use of similar marks on or in connection with both products and retail store services has been held likely to cause confusion where the evidence showed that the Serial No. 85630250 - 9 - retail store services featured the same type of products. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988) (furniture and general merchandise store services); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (beer and for retail store services featuring beer); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (jewelry and for retail-jewelry and mineral-store services); Steelcase, Inc. v. Steelcare, Inc., 219 USPQ 433, 435 (TTAB 1983) (furniture and furniture refinishing); see also In re Peebles, Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (holding the use of nearly identical marks for coats and for retail outlets featuring camping and mountain climbing equipment, including coats, likely to cause confusion, noting that “there is no question that store services and the goods which may be sold in that store are related goods and services for the purpose of determining likelihood of confusion”). Here, the on-line retail store services in the cited registration are broadly worded to include the sale of goods in “the field of computer hardware and software.” To the extent Applicant’s goods are identified as “computer game software,” the goods fit squarely within the field of computer hardware and software. Further, to the extent the recitation of services in the cited registration are construed to be more narrowly drawn to “classroom equipment, classroom furniture, and teaching aids, games, books and educational kits,” such does not avail Applicant, because of the inclusion of “games.” Applicant’s “virtual pet game Serial No. 85630250 - 10 - software” is a “game.”4 Thus, Applicant’s goods would still be encompassed by the goods included in Registrant’s recitation of services. The fact that Applicant’s games, as identified in the application, are for direct download and use on mobile and cellular phones exclusively does not avoid a finding that the goods and services are related, inasmuch as there are no such restrictions in the registration.5 Similarly, the limitation that Applicant’s goods are “not for mail order or direct distribution to schools” does not avoid an overlap with the trade channels through which Registrant’s services will be delivered, because both Applicant and Registrant may offer their software programs via on-line retail channels. The customers are also the same inasmuch as Applicant’s goods are marketed to ordinary consumers and the registration does not restrict Registrant’s consumers to any niche market, such as educators or schools. While we acknowledge that the focus of Registrant’s services appears to be educators, the description of services is not so restricted. For example, two of the activities in the description of services are mail order catalog services and on-line retail store services in the field of computer hardware and software, which are not limited to persons in the field of education. 4 While Applicant advertises its app as “a pet and not a game or an app” (presumably a reference to the attention that is required to keep the virtual pet “alive”), it is offered at the iTunes “Game Center” and advertised under the category of “games.” At http://itunes.apple.com, attached to the June 23, 2015 denial of Applicant’s request for reconsideration. 5 We note the record shows that Applicant advertises its virtual pet game software as compatible with “iPhone, iPad, and iPod touch.” From https://itunes.apple.com; attached to the June 23, 2015 denial of Applicant’s request for reconsideration. Although these modes are not included in the identification of goods, they support a finding of relatedness of the goods because they show that games for mobile application platforms may also cross over to tablet and pocket computers. Serial No. 85630250 - 11 - Corroborating a finding that the goods and services are related, move through similar trade channels and are available to the same purchasers, the Examining Attorney has submitted copies of web pages showing that several well-known game companies (Fisher-Price, Mattel, and Hasbro) also sell downloadable software game applications (“apps”) for mobile phones that are designed for children and feature animals. For example, Fisher-Price offers a “Peek ‘n Play Rainforest app” that “brings playful animals to life through entertaining and interactive peek-a-boo play.”6 It is designed for use with both an iPhone and an iPad.7 Web pages from Mattel, Inc. welcome visitors to the Mattel Digital Network; at http://www.mattel.com/mobile-apps, customers can purchase gaming apps for mobile phones, including those featuring Barbie (the iconic fashion doll).8 Mattel also offers dolls and accessories, including “adorable Barbie pets” in its on-line Mattel Shop.9 The evidence shows that Registrant sells tablets pre-loaded with educational computer games for children. These games utilize three animated cartoon characters, a gecko, a duck and a platypus (who guide the child through cognitive development programs).10 Applicant argues that because Registrant’s games are clearly designed to be educational in nature, they fall within an insulated niche and 6 From https://itunes.apple.com; attached to the June 23, 2015 denial of Applicant’s request for reconsideration. 7 Id. 8 Attached to Office Action dated September 17, 2012. 9 Id., at http://shop.mattel.com. 10 At http://www.hatchearlychildhood.com/Pages/kids-tablet-games-apps; attached to Office Action dated September 17, 2012. Serial No. 85630250 - 12 - that consumers would not confuse Registrant’s goods with Applicant’s, which are designed purely for entertainment. We are not persuaded by the evidence of record that games are so neatly divisible or that Applicant’s games do not contain some educational content, but as stated above, there are no such limitations to be drawn from the goods and services as set forth in the application and registration. Accordingly, we find the second, third and fourth du Pont factors favor a finding of likelihood of confusion. C. Balancing the factors. The marks are similar and the goods and services are related. Despite the limitations to trade channels set forth in Applicant’s application, there are still areas of overlapping distribution, and both companies target the same ordinary customers. We find that Applicant’s mark HATCH for “computer game software for direct download to and use on mobile and cellular phones, namely, virtual pet game software, not for mail order or direct distribution to schools” is likely to cause confusion with the registered mark for “direct marketing to schools; mail order catalog services and on-line retail store services in the field of computer hardware and software, classroom equipment, classroom furniture, and teaching aids, games, books and educational kits; conducting trade show exhibitions in the field of computer hardware and software, classroom equipment, classroom furniture, and teaching aids, games, books and educational kits.” Serial No. 85630250 - 13 - Decision: The refusal to register Applicant’s mark HATCH under Section 2(d) of the Trademark Act is affirmed.