Jason Masayuki Takahashi

Trademark Trial and Appeal BoardMar 14, 2011

No. 77490741 (T.T.A.B. Mar. 14, 2011)

Mailed: March 14, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Jason Masayuki Takahashi ________ Serial No. 77490741 _______ Rebecca L. Covert, Takahashi and Covert, for Jason Masayuki Takahashi. Michelle E. Dubois, Trademark Examining Attorney, Law Office 107 (Joan Leslie Bishop, Managing Attorney). _______ Before Quinn, Kuhlke and Wolfson, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Jason Masayuki Takahashi has filed an application to register the standard character mark GOOD LIFE for goods identified as “footwear; headgear, namely, hats, caps, knit beenies; hooded sweat shirts; knit shirts; long-sleeved shirts; open-necked shirts; pique shirts; polo shirts” in International Class 25.1 1 Application Serial No. 77490741, filed June 4, 2008, alleging July, 2006 as the date of first use and first use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a). THIS OPINION IS NOT PRECEDENT OF THE TTAB Serial No. 77490741 2 Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when used on its identified goods, so resembles each of the two registered marks as to be likely to cause confusion, mistake or deception. The two registered marks are for “designer t-shirts” in International Class 25 owned by Christopher Molnar,2 and for “retail store services featuring clothing, namely, shirts, pants, shorts and tank tops” in International Class 25 owned by Joseph Mancello.3 When the refusals were made final, applicant appealed and briefs have been filed. We affirm the refusals to register as to each of the cited registrations. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 2 Registration No. 2982568, issued August 9, 2005, containing the following description of the mark: “The symbols below the script writing of ‘GOODLIFE’ also mean ‘GOODLIFE’ in a symbol font.” 3 Registration No. 3232066, issued April 24, 2007, the word APPAREL is disclaimed. Serial No. 77490741 3 (Fed. Cir. 2003). In any likelihood of confusion analysis, 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). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We turn first to du Pont factor of the similarity of the marks, i.e., whether applicant’s mark GOOD LIFE (in standard characters) and registrants’ marks GOODLIFE (stylized form with design) and GOODLIFE APPAREL (and design) are similar or dissimilar when compared in their entireties in terms of appearance, sound, connotation and commercial impression. It is well settled that marks must be considered in their entireties, not dissected or split into component parts and each part compared with other parts. It is the impression created by the involved marks, each considered as a whole, that is important. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). Moreover, 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 RSI Systems, LLC, 88 USPQ2d 1445 (TTAB 2008); In re Serial No. 77490741 4 Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); TMEP §1207.01(c)(iii) (7th ed. rev. 2010). The dominant element in both of the registrants’ marks is the word GOODLIFE. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“That a particular feature is descriptive [or otherwise lacking in distinctiveness] ... with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark...”). In Reg. No. 2982568, the minimal design element below the wording is not prominent and, in general, wording dominates over design. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). In Reg. No. 3232066, the additional word APPAREL is weak in that it is generic for or, at a minimum, is highly descriptive of the services. In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); and In re Rexel Inc., 223 USPQ 830 (TTAB 1984). In addition, it is subordinate in placement, coming after the word GOODLIFE. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1698, 1692 (Fed. Cir. 2005) (first word in the mark is the prominent feature); In re Dixie Restaurants Inc., 41 USPQ2d 1531 (“Delta” dominant portion of “The Delta Cafe” where “cafe” Serial No. 77490741 5 disclaimed); and Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895 (TTAB 1988). Further, we must consider any reasonable display or stylization of applicant’s standard character mark, including the stylization in registrants’ marks. RSI Inc., 88 USPQ2d at 1885. Taking these factors into consideration, but for the space in applicant’s mark, the dominant element in each of registrants’ marks is identical to applicant’s mark. Thus, viewing the marks in their entireties, they are very similar in appearance, sound, connotation and overall commercial impression. Applicant’s argument that its mark is not confusingly similar based on how it is used in the market place is unavailing. We are constrained to make our determination based on the applied-for mark and not on its manner of use based on extrinsic evidence. In re Shell Oil Co., 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993) (“Although Shell argues that its use of RIGHT-A-WAY would be in association with other Shell trademarks, the proposed registration is not so limited. Registrability is determined based on the description in the application, and restrictions on how the mark is used will not be inferred.”). We turn then to a consideration of the goods identified in the application and the goods and services in Serial No. 77490741 6 the cited registrations. It is well settled that goods and services need not be similar or competitive in nature to support a finding of likelihood of confusion. The question is not whether purchasers can differentiate the goods and services themselves, but rather whether purchasers are likely to confuse the source of the goods and services. See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). In addition, the relevant goods and services need not be identical or directly competitive to find likelihood of confusion. Instead they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. Online Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000). Further, we must consider applicant’s goods and the cited registrants’ goods and services as they are identified in the application and respective registrations, and we cannot read limitations into those identifications. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the identification in an Serial No. 77490741 7 application or a cited registration describes goods or services broadly, and there is no limitation as to the nature, type, channels of trade or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all channels of trade normal for these goods and services, and that they are available to all classes of purchasers for the described goods and services. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). The identification of “footwear; headgear, namely, hats, caps, knit beenies; hooded sweat shirts; knit shirts; long-sleeved shirts; open-necked shirts; pique shirts; polo shirts” in the application includes closely related goods to the “designer t-shirts” in Registration No. 2982568 inasmuch as the application does not exclude “designer” wear and “hooded sweat shirts, open-necked shirts, pique4 shirts and polo shirts” are similar types of clothing to registrant’s “designer t-shirts” and often emanate from the same source as shown by the third-party registrations 4 Pique is defined as “a durable ribbed clothing fabric of cotton, rayon or silk.” Merriam-Webster’s Collegiate Dictionary (10th ed. 1999) University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) (The Board may take judicial notice of dictionary definitions.). Serial No. 77490741 8 submitted by the examining attorney. See, e.g., Reg. No. 2767095 for the mark SURF CITY TRADING CO. for, inter alia, “tee shirts, sweatshirts, knit wear”; Reg. No. 2530664 for the mark H & F for, inter alia, “t-shirts, knit tops, sweatshirts”; Reg. No. 2738558 for the mark TOP MODEL JEANS for, inter alia, “t-shirts, sweatshirts”; Reg. No. 3404227 for the mark RV RED VELVET BIJOUX for, inter alia, “knit shirts, pique shirts, polo shirts, sweatshirts, tee shirts”; and Reg. No. 3479237 for the mark WEAR CONSCIOUS CLOTHING for, inter alia, “t-shirts, polo shirts, knit short-sleeved shirts, hooded sweat shirts.” In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) (third-party registrations may have some probative value to the extent that they serve to suggest that the listed goods and/or services are of a type which may emanate from a single source). With regard to Registration No. 3232066, it is well settled that services and goods may be sufficiently related such that use of a similar mark on goods of the type offered by the store services would be likely to cause confusion. In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms). The Serial No. 77490741 9 examining attorney submitted several third-party registrations where retail store services and clothing of the type identified in the application were registered under a single mark. In addition, she submitted excerpts from third-party websites showing use of the same mark for online retail services and clothing goods. These website printouts also evidence that such goods and services travel in the same channels of trade. Moreover, given that the goods and services are closely related and there is no limitation in the identification thereof in the application, we must presume that the closely related goods and services will be sold and offered in some of the same channels of trade, and will be bought by some of the same purchasers. See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). In view of the above, the du Pont factors of the similarity of the goods and services, the channels of trade, and class of purchasers favor a finding of likelihood of confusion as to the cited registrations. Again, applicant’s argument regarding differences in the “targeted market” and manner of use are not persuasive. Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986) (“It is Serial No. 77490741 10 well settled that in a proceeding such as this, the question of likelihood of confusion must be determined by an analysis of the marks applied to the goods as identified in the application vis-à-vis those recited in the registration, rather than what extrinsic evidence shows those goods to be.”) As stated supra, the goods listed in the identification of goods in the application are not specifically, or by their nature, limited such that they would not include “designer” style clothing. We add that the services in Reg. No. 3232066 have not been limited to any particular “target market.” Applicant’s primary argument is that the “Office Action” was arbitrary and capricious and evidenced abuse of discretion because the Office Action represented an inconsistent application of agency standards with respect to other decisions.” Br. p. 3. Applicant bases its assertion on the fact that the two cited GOODLIFE registrations coexist. Specifically, applicant contends that “[i]n approving Trademark Registration No. 3232066 the Trademark Office must have concluded that the second ‘GOODLIFE’ mark in apparel goods (No. 3232066) would not have mislead or deceived the public. This is the reasonable conclusion given the mark was registered despite the same use of words and the fact both marks were used Serial No. 77490741 11 primarily on apparel goods. Therefore its decision here that Applicant’s ‘GOODLIFE’ mark, appealing to a totally different clientele from the two existing marks, had a likelihood of causing confusion sufficient to deny the application is unreasonable.” Br. pp. 3-4. It is well established that each case must stand on its own merits and we do not find applicant’s argument persuasive. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). “[P]rior decisions in trademark cases, where the issue is a likelihood of confusion, furnish meager assistance in the resolution of that issue. Each case must be decided on the basis of the factual situation thereby presented.” Polaroid Corp. v. Richard Mfg. Co., 341 F.2d 150, 144 USPQ 419, 421 (CCPA 1965). See also In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977). While we appreciate applicant’s position, “the existence on the register of confusingly similar marks [should not] aid an applicant to register another likely to cause confusion, mistake or to deceive.” AMF Inc. v. American Leisure Products, 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). In conclusion, we find that because the marks are very similar, the goods and services are closely related, and the channels of trade are the same, confusion is likely Serial No. 77490741 12 between applicant’s mark and the marks in the cited registrations. To the extent there are any doubts, we resolve them, as we must, in favor of the registrants. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988). Decision: The refusals to register under Section 2(d) of the Trademark Act are affirmed.