Jamestown Container Corporation

Trademark Trial and Appeal BoardApr 28, 2014

No. 85796355 (T.T.A.B. Apr. 28, 2014)

Mailed: April 28, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Jamestown Container Corporation ________ Serial No. 85796355 _______ Patrick A. Quinlan of Jaeckle, Fleischmann & Mugel LLP for Jamestown Container Corporation. Doritt Carroll, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney). _______ Before Bucher, Lykos, and Hightower, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: Jamestown Container Corporation (“applicant”) has applied to register on the Principal Register the mark “eVMI ELECTRONIC VENDOR MANAGED INVENTORY a Jamestown Container Solution” and design displayed below This Opinion is Not a Precedent of the TTAB Serial No. 85796355 2 for “inventory management” in International Class 35.1 Applicant has appealed the Trademark Examining Attorney’s final refusal to register the mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s applied-for mark “eVMI Vendor Managed Inventory” and design so resembles the mark displayed below for “inventory control services; inventory management services in the field of MRO, namely, maintenance, repair and operations supplies and metal working products” in International Class 352 that when used on or in connection with applicant’s identified services, it is likely to cause confusion or mistake or to deceive. For the reasons explained below, we affirm the refusal to register. 1 Application Serial No. 85796355, filed December 6, 2012, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). The description of the mark is as follows: The mark consists of the stylized letters “EVM” inside a circle, the letter “I” outside the circle, the wording “ELECTRONIC VENDOR MANAGED INVENTORY” to the right of the circle, and the wording “A JAMESTOWN CONTAINER SOLUTION” under the wording “ELECTRONIC VENDOR MANAGED INVENTORY.” Color is not claimed as a feature of the mark. During ex parte prosecution, applicant disclaimed the wording “EVMI ELECTRONIC VENDOR MANAGED INVENTORY” or “SOLUTION” apart from the mark as shown. 2 Registration No. 3210928, registered on February 20, 2007, pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging May 31, 2003, as the date of first use anywhere and in commerce; Sections 8 and 15 affidavits accepted and acknowledged. Color is not claimed as a feature of the mark. The registration includes a disclaimer of EVMI VENDOR MANAGED INVENTORY. Serial No. 85796355 3 We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. 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 are discussed below. A. The Services and Channels of Trade We begin with a comparison of the services identified in applicant’s application vis-à-vis the services identified in the cited registration.3 At the outset, we note that the involved application and cited registration involve services that are legally identical. This is because applicant’s more broadly worded “inventory management” services necessarily encompass registrant’s more narrowly identified type of “inventory management services in the field of MRO, namely, maintenance, repair and operations supplies and metal working products.” Given the legally identical nature of the services, the second du Pont factor weighs in favor of finding a likelihood of confusion. Because the services described in the application encompass those of the cited registration, we must presume that the channels of trade and classes of purchasers 3 Applicant does not address this issue in its appeal brief. Nonetheless, the Office has the burden of showing that the services are related. Serial No. 85796355 4 are the same. See 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); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 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). In other words, we must assume that applicant’s more broadly defined “inventory management” services will be marketed and sold to the same prospective purchasers in registrant’s more narrowly defined field of “MRO, namely, maintenance, repair and operations supplies and metal working products.” As such, the third du Pont factor – the similarity or dissimilarity of established, likely to continue trade channels – also favors a finding of likelihood of confusion. B. Comparison of the Marks Next we consider the du Pont likelihood of confusion factor regarding 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 (Fed. Cir. 2005). “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 Serial No. 85796355 5 between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Insofar as the services are legally identical, the degree of similarity between the marks that is necessary to support a finding of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). Applicant’s and registrant’s marks are comprised, in part, of the literal element “eVMI”, which we find to be the dominant portion of each mark. This is because in each mark, the term “eVMI” appears in larger, more prominently displayed and stylized font in relation to the remaining literal elements. The term “eVMI” also appears first, and therefore is more likely to be remembered by consumers in calling for the services. See Palm Bay Imps., 73 USPQ2d at 1692. We further find that the term “eVMI” as applied to both applicant and registrant’s marks has no other meaning other than an initialism for “electronic vendor managed inventory.” As such, both applicant’s and registrant’s marks have the same connotation as applied to their services. That being said, our analysis cannot be predicated on dissection of the involved marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Rather, we are obliged to consider the marks in their entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 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”). In fact, there is nothing improper in stating that, for rational reasons, Serial No. 85796355 6 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 National Data Corp., 224 USPQ at 751. Consistent with these principles, we observe that in applicant’s mark, the term “ELECTRONIC VENDOR MANAGED INVENTORY“ appears in smaller size font to the right of the term “eVMI,” and that the house mark “a Jamestown Container Solution” appears in even smaller size lettering below that phrase. Thus, it is more likely that prospective consumers will pay less attention to this visually smaller wording and instead treat the proportionally larger term “eVMI” as the dominant source-identifying element. A similar analysis applies as well to the registered mark insofar as the wording “Vendor Managed Inventory” appears in smaller size font below the proportionally larger term “eVMI.” As to the circle design in applicant’s mark, we find that in this particular case, the presence of this design element fails to mitigate the highly similar sound, appearance, and connotation of the involved marks. When a mark consists of a literal portion and a design portion, the literal portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services; therefore, the literal portion is normally accorded greater weight in determining whether marks are confusingly similar. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F. 2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). This is especially true here, where the design feature in applicant’s Serial No. 85796355 7 mark serves more as a carrier for the prominently displayed term “eVMI,” thereby reinforcing the dominance of that term. Similarly, the series of lines in the registered mark representing a bar code for electronic inventory management does not in any way detract from, but rather emphasizes, the shared literal meanings of both marks as that of providing electronic inventory management services. Applicant contends that because the disclaimed term “eVMI” is descriptive of both applicant’s and registrant’s services, the design features of each mark must be given greater weight in the likelihood of confusion analysis. For the reasons articulated above, we disagree. We further note that in this particular case, the fact that the term “eVMI” is descriptive and disclaimed in both the application and cited registration does not mean that the cited mark is not entitled to protection from registration of a very similar mark, given the legally identical nature of the services. See Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). Applicant also argues that the addition of the house mark “a Jamestown Container Solution” to its mark mitigates any likelihood of confusion, and that the examining attorney did not give proper weight to applicant’s house mark. Applicant points to prior Board decisions, notably Knight Textile Inc. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) and Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066 (TTAB 2011) for the proposition that the addition of a house mark obviates any likelihood of confusion. We are not persuaded. Again, for the reasons explained above, we do not view applicant’s house mark as the dominant feature of Serial No. 85796355 8 the mark. Furthermore, likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding a house mark; if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences. See In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (holding applicant’s mark, [Sparks by sassafras (stylized)], for clothing, and registrant’s mark, , for footwear, likely to cause confusion, noting that “[t]hose already familiar with registrant’s use of its mark in connection with its goods, upon encountering applicant’s mark on applicant’s goods, could easily assume that ‘sassafras’ is some sort of house mark that may be used with only some of the ‘SPARKS’ goods”).4 This is precisely the situation here where the dominant portions of each mark (“eVMI”) are indeed identical, proportionally larger, and appear first in both the applicant’s and registrant’s marks. Upon close review, the cases cited by applicant noted above present different factual circumstances. In both cases, the house mark portion of the marks appeared first, and therefore was the dominant portion. See Knight Textile Inc. v. Jones Investment Co., 75 USPQ2d at 1315 (applicant’s “Norton McNaughton Essentials” trademark for women’s clothing is not confusingly similar to opposer’s registered “Essentials” mark for similar goods). In addition, in the case of Rocket Trademarks Pty Ltd. v. Phard S.p.A., supra, not only did the house mark ZU appear first in the mark ZU ELEMENTS, it was significantly larger. As the Board explained, 4 Applicant has also cited to several Federal circuit court opinions for the proposition that the use of a house mark decreases the likelihood of confusion. Given that such cases involve infringement actions, they are inapposite here. Serial No. 85796355 9 Despite sharing an ELEMENT-formative term, we find the parties’ marks, overall, to be dissimilar. This is mainly due to the dominant role of the term ZU in applicant’s mark. The term ZU appears significantly larger and very prominently above the smaller font-sized ELEMENTS. ZU visually dominates applicant’s mark and, consequently, is the term that will most likely be impressed in the minds of consumers. Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d at 1075-76. Such is not the case here where applicant’s house mark appears not only as the final element in its mark but also in much smaller size font. We therefore find that applicant’s mark is similar in sound, appearance and connotation to the cited registered mark, thereby engendering a similar commercial impression. This first du Pont factor also weighs in favor of finding a likelihood of confusion. To the extent that there are any other relevant du Pont factors, we treat them as neutral. After considering all of the evidence of record and argument pertaining to the du Pont likelihood of confusion factors, we find that because the marks are overall similar in sound, appearance, connotation and commercial impression and because the services and trade channels at issue are in part identical, confusion is likely between applicant’s mark for its identified services and the mark in the cited registration. DECISION: The refusal to register under Section 2(d) is affirmed.