IPAC S.p.A.

Trademark Trial and Appeal BoardJun 7, 2021

79269289 (T.T.A.B. Jun. 7, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: June 7, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re IPAC S.p.A. _____ Serial No. 79269289 _____ Dennis H. Cavanaugh of D H Cavanaugh Associates, for IPAC S.p.A. Valerie Kaplan, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Kuhlke, Taylor and Greenbaum, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: IPAC S.p.A. (“Applicant”) seeks registration on the Principal Register of the mark IPAC and design (shown below) for the following goods, as amended: Household and kitchen utensils and containers, namely, kitchen tongs, containers for household use, and spatulas; combs and cleaning sponges; Brushes, namely, washing brushes; brush-making materials; cleaning cloths; drinking straws made of steel; unworked or semi-worked glass except glass used in building; Beverage glassware, porcelain mugs, and earthenware food household container and portable beverage container holder Serial No. 79269289 - 2 - in International Class 21.1 The mark is described in the application as follows: “The mark consists of two parallel lines then going in vertical, with the underlying writing ‘IPAC.’” Color is not claimed as a feature of the mark. The Trademark Examining Attorney finally 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 is likely to be confused with the marks in Registration No. 4836835,2 IPACK (in standard characters), and Registration No. 4955843,3 IPACK and design (shown below), both for “Thermal insulated containers for food or beverages; Portable coolers; Cups; Thermal insulated bags for food or beverages; Vacuum bottles; Drinking vessels” in International Class 21, and both owned by the same entity.4 1 Application Serial No. 79269289 was transmitted to the USPTO on May 11, 2017, pursuant to Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), based on International Registration No. 1491872, registered May 24, 2019. 2 Issued October 20, 2015, Section 8 Affidavit accepted, Section 15 Affidavit Acknowledged. 3 Issued May 10, 2016. The registration lists additional goods in International Class 18 that are not involved in this appeal. 4 The Examining Attorney also finally refused registration based on a requirement for a more definite identification of goods. In its brief, Applicant indicated that it accepted the Examining Attorney’s proposed amendment to the goods, which apparently was acknowledged and accepted by the Examining Attorney, since she stated in her brief that the only issue on appeal is likelihood of confusion. Serial No. 79269289 - 3 - After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. 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. DuPont 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. 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 In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019) (Board considers each DuPont factor for which there is evidence and argument). Since both of the cited marks cover the same goods, we focus our analysis on the standard character mark IPACK in cited Registration No. 4836835 (’835 Reg.) because that mark contains less points of difference than the cited IPACK word and Serial No. 79269289 - 4 - design, the subject of Registration No. 4955843. If confusion is likely between Applicant’s mark and the mark in the ’835 Reg., there is no need for us to consider the likelihood of confusion with the other cited mark. See, e.g., In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). II. Discussion A. The Goods, Trade Channels and Classes of Consumers We first consider the DuPont factors involving the relatedness of the goods, channels of trade and classes of consumers. In making our determination regarding the similarity of the goods, we must look to the goods as identified in the application and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). As noted above, Applicant’s identified goods are “household and kitchen utensils and containers, namely, kitchen tongs, containers for household use, and spatulas; combs and cleaning sponges; brushes, namely, washing brushes; brush-making materials; cleaning cloths; drinking straws made of steel; unworked or semi-worked glass except glass used in building; beverage glassware, porcelain mugs, and earthenware household container food and portable beverage container holder” and Registrant’s goods are “thermal insulated containers for food or beverages; portable coolers; cups; thermal insulated bags for food or beverages; vacuum bottles; drinking vessels.” Serial No. 79269289 - 5 - Registrant’s broadly identified “drinking vessels” encompass Applicant’s more narrowly identified “beverage glassware and porcelain mugs,” and Applicant’s broadly identified “containers for household use” encompass Registrant’s more narrowly identified “thermal insulated containers for food or beverages.” Where an applicant or registrant broadly identifies their products in an application or registration, we must presume that the description of goods encompasses all products of the type identified. See In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018) (where the goods in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein); In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses. Registrant’s narrowly identified ‘residential and commercial furniture.’”). In addition, the Examining Attorney submitted Internet evidence demonstrating that the same entity commonly manufactures, produces or provides some of the goods identified in both Applicant’s and Registrant’s respective identifications under the same mark: Ozeri offers containers for household use, including food storage containers and thermal insulated containers for food or beverages under the OZERI mark, and drinking vessels, including double walled beverage glassware under the MODERNA ARTISAN SERIES5; Bruntmor offers containers for household use, including earthenware and stainless steel food containers and thermal insulated containers for food or beverages, and 5 May 26, 2020 Office Action, TSDR 9-30. Serial No. 79269289 - 6 - drinking vessels, including beverage glassware, vacuum bottles and ceramic mugs under the BRUNTMOR mark6; Pyrex offers containers for household use, including thermal insulated containers for food or beverages and glass food storage containers under the PYREX mark, and drinking vessels including porcelain mugs and acrylic drinking glasses under the CORELLE mark7; and BergHOFF offers drinking vessels, including wine glasses and travel mugs and breakfast cups, and containers for household use, including covered glass food containers and stainless steel insulated food containers under the BergHOFF mark.8 Under this DuPont factor, we need not find similarity as to every product listed in the description of goods. It is sufficient for a refusal based on likelihood of confusion that the Examining Attorney establish relatedness for any item encompassed by the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); 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.”). Because a product in each of Applicant’s and Registrant’s broad descriptions of goods is broad enough to include one or more of the 6 Id. at TSDR 31-43. 7 Id. at TSDR 45-87. 8 Id. at TSDR 88-133. Serial No. 79269289 - 7 - products in the other’s identification, we find that the goods are in part legally identical. Furthermore, because the goods described in the application and the cited registration are in part legally identical, we presume that the channels of trade and classes of purchasers for those goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (identical goods are presumed to travel in same channels of trade to same class of purchasers) (cited in Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (“With respect to similarity of the established trade channels through which the goods reach customers, the TTAB properly followed our case law and ‘presume[d] that the identical goods move in the same channels of trade and are available to the same classes of customers for such goods....’”); 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). Therefore, at a minimum, the channels of trade and classes of consumers overlap. We accordingly find the DuPont factors concerning the relatedness of the goods, trade channels and classes of purchasers favor a finding of likelihood of confusion. B. Purchaser Sophistication and Care Applicant asserts that the respective goods “are products that individuals use in connection with food and beverages that they ingest or that interact with their bodies. … As such, consumers of the parties’ respective goods would be even more likely to be sophisticated consumers who know with whom they are dealing and what they are Serial No. 79269289 - 8 - purchasing.”9 Applicant’s brief p. 15.10 The problem with this argument is that there is no evidence that consumers exercise a heightened degree of care when purchasing the products listed in the respective identifications. In fact, the record shows that many of products listed in both Applicant’s and Registrant’s identifications are relatively inexpensive household items (e.g., Ozeri ThermoMax Stackable Lunch Box Food Storage Container - $18.74, Bruntmor double wall espresso glass - $14.95 and coffee mug set of 6 - $24.95, Corelle 11oz. mug - $4.25 and a Pyrex glass food storage container with lid - $7.00) that may be subject to impulse buying. See Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care.”); Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144, 227 USPQ 541, 542 (Fed. Cir. 1985) (purchasers of “relatively inexpensive and frequently replaceable ... products have long been held to a lesser standard of purchasing care”). Even if we were to assume that some of the purchasers of both Applicant’s and Registrant’s goods exercise a higher degree of care in their purchasing decisions, we 9 We decline to take judicial notice that “parents are extremely conscious of the cleanliness and composition of the products they use with their babies,” as this is not the type of fact that may be judicially noticed. The only kind of fact that may be judicially noticed by the Board is a fact that is “not subject to reasonable dispute in that it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201(b). See also Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 704.12 (2020). 10 4 TTABVUE 19. Serial No. 79269289 - 9 - must consider that some would not. See Stone Lion, 110 USPQ2d at 1163 (the standard of care for purchasing the goods is that of the least sophisticated potential purchaser). Moreover, even knowledgeable and careful purchasers can be confused as to source, where, as here, very similar marks (more fully discussed below) are used in connection with in-part identical goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers … are not infallible.”)). We accordingly find this DuPont factor neutral. C. 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 Electric Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The Serial No. 79269289 - 10 - 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). In this case the average consumer is an ordinary purchaser of housewares and kitchen items. 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, different features may be analyzed to determine whether the marks are similar. Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, 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. Under this framework we compare Applicant’s mark with the cited standard character mark IPACK. Applicant argues that its mark is “readily Serial No. 79269289 - 11 - distinguishable from the cited mark in overall, sight, sound and meaning.” Applicant’s brief p. 10.11 We disagree and find the marks similar in appearance, sound and connotation. Both marks include as the dominant and literal, or only, element the word IPAC or its phonetic equivalent IPACK. While we do not ignore the design element of Applicant’s composite mark, which is described in the application as “consist[ing] of two parallel lines then going in vertical,” it fails to distinguish Applicant’s mark Registrant’s mark. Where both words and a design comprise a mark, the words are normally accorded greater weight because they are 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, 101 USPQ2d at 1908, citing CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in 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 design is clearly visible, it does not create a unique and distinguishing commercial impression apart from that imparted by the literal element of Applicant’s mark. We are not convinced that consumers would, as Applicant would have us believe, perceive the parallel and vertical lines design as an “inverted V design” or to convey “an industrial technical feeling,” as opposed to an abstract line design, such that it would impart a unique commercial impression. In addition, the cited mark IPACK only varies in appearance from the IPAC portion of Applicant’s mark by the addition of the letter K. Slight differences in marks 11 4 TTABVUE 14. Serial No. 79269289 - 12 - do not normally create dissimilar marks. See Weiss Assoc., Inc. v. HRL Associates, 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990) (“It is especially hard to distinguish between TMS and TMM when the marks only differ by the last letter.”); Mag Instr. Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1714-15 (TTAB 2010) (difference of a single letter does not suffice to distinguish MAG STAR from MAXSTAR). See also In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983) (“Slight differences in the sound of similar marks do not avoid a likelihood of confusion.”). Moreover, given that the differences between the marks are at the end of each, they may not be noticed or appreciated by the average consumer who normally retains a general, rather than specific, impression of trademarks. 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). Also, we are not persuaded that the block letter, sans serif typeface stylization of the term IPAC obviates the similarities between the marks. Because Registrant’s mark is a standard character mark, its display is not limited to any particular font, style, size, or color, and we therefore must consider that it might be used in any stylized display, including the same or similar stylization of the lettering used by Applicant. See In re Viterra, 101 USPQ2d at 1909-10; Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011). For this reason, we find unpersuasive Applicant’s argument that because “the cited mark begins with a lower case ‘i’ which has a specific and commonly-known connotation, namely, the Internet, digitization or anything related thereto, as demonstrated by Serial No. 79269289 - 13 - the Apple line of products such as iMAC, iPhone, etc. …[, it] makes a unique commercial impression and will convey a specific and readily understandable connotation: a range of products related to the Internet or digitization.” Applicant’s brief p. 7.12 Rather, to the extent that the terms IPAC and IPACK convey any commercial impression when viewed in connection with the respective in-part identical products, it would be the same. We recognize that in comparing the marks, we must consider Applicant’s and Registrants’ marks in their entireties. Thus, we have taken into account all of the differences in appearance between them. We nonetheless find that despite these differences, in their entireties, they are more similar than dissimilar and engender very similar overall commercial impressions.13 Accordingly, the similarity between the marks is a factor that weighs in favor of a finding of likelihood of confusion. D. Conclusion We conclude that confusion is likely between Applicant’s mark for the identified household and kitchen utensils and containers and the cited IPACK mark 12 4 TTABVUE 11. 13 Applicant relies a number of decisions to support of its position that the marks at issue in this case are not confusingly similar. It has been noted many times 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 above, we find the marks to be confusingly similar. Serial No. 79269289 - 14 - for the identified goods, including thermal insulated containers for food or beverages and drinking vessels. We conclude so principally due to the similarity of the marks, the in-part identical goods, and the presumed overlap in trade channels and purchasers. Decision: The refusal to register Applicant’s mark under Section 2(d) is affirmed.