Karma Capital Construction, LLC

Trademark Trial and Appeal Board

Jan 18, 2022

88597944 (T.T.A.B. Jan. 18, 2022)

Mailed: January 18, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ---- In re Karma Capital Construction, LLC _____ Serial No. 88597944 _____ Usha Menon of D’Ambrosio & Menon PLLC for Karma Capital Construction, LLC. Verna B. Ririe, Trademark Examining Attorney, Law Office 104, Zachary Cromer, Managing Attorney. _____ Before Wellington, Adlin and English, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Applicant Karma Capital Construction, LLC seeks a Principal Register registration for the mark shown below for “new home building; construction of new residential homes and commercial office buildings; remodeling and renovation of residential and commercial properties; real estate development of residential and commercial property” in International Class This Opinion is Not a Precedent of the TTAB Serial No. 88597944 2 37.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act on the ground that Applicant’s mark so resembles the three commonly-owned marks shown below, each of which is registered for, inter alia, “building construction, remodeling and repair,” “general building contractor services” and “maintenance and renovation of property,” in International Class 37: 2 3 4 1 Application Serial No. 88597944, filed August 29, 2019 under Section 1(a) of the Trademark Act, based on first use dates of May 31, 2018. The application contains this description of the mark: “The mark consists of the letters J H situated inside of a pentagon. Three circles are positioned above both letters.” Color is not claimed as a feature of the mark. 2 Registration No. 5089777, issued November 29, 2016 (the “’777 Registration”). This registration also includes additional services in Class 37, as well as additional goods and services in Classes 2, 6, 7, 17, 19, 35 and 42 which are not a basis for the refusal. The registration includes this description of the mark: “The mark consists of the capital letters ‘J’ and ‘H’ in a diagonal position within a circle, that circle appearing inside a square.” 3 Registration No. 5254148, issued August 1, 2017. This registration also includes additional services in Class 37, as well as additional goods and services in Classes 2, 17, 19 and 35 which are not a basis for the refusal. The registration includes a color claim and this description of the mark: “The mark consists of the capital letters ‘J’ and ‘H’ in white in a diagonal position with the top of the ‘J’ and the bottom of the ‘H’ extending to form a circle with a white border around the letters, with that circle appearing within another outer circle inside a green square.” 4 Registration No. 4995930, issued July 12, 2016. This registration also includes additional services in Classes 37 and 35 which are not a basis for the refusal. The registration includes a disclaimer of CONTRACTOR ALLIANCE, a statement that “The name ‘James Hardie’ does not identify a living individual,” and this description of the mark: “The mark consists of a shaded rectangular design with the appearance of brushed metal with the phrase ‘CONTRACTOR ALLIANCE’ appearing in the rectangular design and with a shaded border around the rectangular design. Below the phrase ‘CONTRACTOR ALLIANCE’ are the letters ‘JH’ in a circle design in a shaded square and the phrase ‘JamesHardie’. A house-shaped design in the center of a horizontal line appears above the phrase ‘CONTRACTOR Serial No. 88597944 3 that it is likely to cause confusion.5 After the refusal became final, Applicant appealed and filed a request for reconsideration which was denied. Applicant and the Examining Attorney filed briefs. I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) (setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor about which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the 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 differences in the marks.”). We focus our analysis on the mark in the cited ’777 Registration. If we find confusion likely between that mark and Applicant’s involved mark, we need not consider the likelihood of confusion between Applicant’s mark and the other cited ALLIANCE’ and there is another horizontal line below the phrase ‘CONTRACTOR ALLIANCE’.” 5 The Examining Attorney effectively withdrew the refusal based on Registration No. 5833220, because that registration was cancelled. 8 TTABVUE 4-5. Serial No. 88597944 4 marks. On the other hand, if we find no likelihood of confusion between the mark in the ’777 Registration and Applicant’s mark, we would not find confusion likely between Applicant’s mark and the other cited marks. In re Max Capital Grp., 93 USPQ2d 1243, 1245 (TTAB 2010). A. The Services, Channels of Trade and Classes of Consumers The services are legally identical because: (1) Registrant’s “building construction” and “general building contractor” services are broadly identified and encompass Applicant’s “new home building” and “construction of new residential homes” services; and (2) Registrant’s “maintenance and renovation of property” services are broadly identified and encompass Applicant’s “remodeling and renovation of residential properties” services.6 See S.W. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where services are broadly identified, they are deemed to encompass all of the services of the nature and type described); 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’”). This factor therefore not only weighs heavily in favor of finding a likelihood of confusion, but it also reduces the degree of similarity between the marks necessary to find a likelihood of confusion. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital 6 In addition, the Examining Attorney introduced evidence showing that the services are closely related. November 13, 2020 Office Action TSDR 5-27; June 12, 2020 Office Action TSDR 8-57; December 17, 2019 Office Action TSDR 25-30. Serial No. 88597944 5 Grp., 93 USPQ2d at 1248. Furthermore, because the services overlap, we presume that the channels of trade and classes of purchasers for Applicant’s and Registrant’s legally identical services also overlap. See In re Viterra, 101 USPQ2d at 1908 (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 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); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). These factors therefore also weigh heavily in favor of finding a likelihood of confusion. B. The Marks The marks, and , are similar “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). In fact, the marks’ literal elements are identical, and their stylizations and accompanying designs are relatively non-distinctive. In both marks, as is typically the case, the literal element is dominant notwithstanding the accompanying design. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d Serial No. 88597944 6 1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services” and “because applicant’s mark shares with registrant’s mark that element responsible for creating its overall commercial impression, the marks are confusingly similar”). While the initials JH do not form a word, they stand for a name in at least Registrant’s case (Registrant is James Hardie Technology Limited), are the only element of the marks that would be pronounced and are the way consumers would request the services. As Applicant admits, its “pentagon” design “is suggestive of a detached house.” 6 TTABVUE 10-11, 14. It is therefore less distinctive than JH when used in connection with Applicant’s home building services. In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1268 (TTAB 2011) (“because of the laudatory suggestive nature of the crown design … the absence of these elements from applicant’s mark and/or presence of them in the cited marks are not sufficient to distinguish the marks”). See also Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000) (“it is proper to give greater weight to the PACKARD portion of the PACKARD TECHNOLOGIES mark on the ground that the word ‘technology’ is highly suggestive/merely descriptive with respect to the services at issue”); Pioneer Hi-Bred Corn Co. v. Welp, 280 F.2d 151, 126 USPQ 398, 399 (CCPA 1960) (“‘Hy’ therefore has a suggestive significance, hence is not entitled to as great weight in determining likelihood of confusion as an arbitrary word or syllable.”). Serial No. 88597944 7 As for Registrant’s mark, its design is merely, as Applicant describes it, a “circle appearing inside a square.” Circles, squares and similarly basic geometric shapes are not distinctive either. In re Hughes Furniture Indus., 114 USPQ2d at 1138 (“the design features in Applicant’s mark [a rectangle enclosing the literal elements and two horizontal lines] merely serve as carriers for the wording and do not include a distinctive element with strong source-identifying characteristics”); In re American Academy of Facial Plastic and Reconstructive Surgery, 64 USPQ2d 1748, 1753 (TTAB 2002) (“However, ordinary geometric shapes such as circles, ovals, squares, stars, etc., are generally regarded as nondistinctive and protectable only upon proof of acquired distinctiveness.”); Guess? Inc. v. Nationwide Time Inc., 16 USPQ2d 1804, 1805 (TTAB 1990); J.T. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 7:33 (5th ed. Dec. 2021 update) (“Ordinary geometric shapes such as circles, ovals, squares, etc., even when not used as a background for other marks, are regarded as nondistinctive and protectable only upon proof of secondary meaning.”). For this reason, the circles “positioned above both letters” in Applicant’s mark are also not distinctive, and are subordinate to the mark’s literal element JH, which is identical to the literal element in the cited mark.7 Finally, while the initials JH are depicted in different stylized forms in each mark, the stylizations are not nearly enough to overcome the similarities between the marks resulting from their use of identical initials. In fact, the marks look similar because 7 If the circles above the letters in Applicant’s mark are perceived as windows on the house, they would be non-distinctive for the same reason the house design itself is non-distinctive. Serial No. 88597944 8 they share the same initials, sound identical and convey the same meanings and commercial impressions, which are derived from the identical initials. Consumers are unlikely to recall that Registrant’s mark depicts the letters in “diagonal position,” or that the letters are displayed in different, pedestrian stylized formats. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (“marks must be considered in light of the fallibility of memory”) (citation, internal quotation marks, and ellipsis omitted); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d, 972 F.2d 1353 (Fed. Cir. 1992) (“The proper emphasis is thus on the recollection of the average customer, who normally retains a general rather than a specific impression of trademarks or service marks.”).8 Even if consumers did recall the differences between the marks, there is no reason to assume that they would believe the marks identify different sources. Rather, it seems more likely that consumers familiar with one mark who then encounter the other would perceive the marks as identifying the same source, a source that uses multiple versions of its JH mark. This factor also weighs in favor of finding a likelihood of confusion. C. Purchaser Sophistication and Care We accept Applicant’s argument that the relevant consumers will exercise an elevated degree of care in purchasing. Indeed, we do not need evidence to know that 8 Applicant argues in its Appeal Brief that “the marks must be considered in a side-by-side comparison.” 6 TTABVUE 11; see also 6 TTABVUE 15-17. In fact, the opposite is true. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). Serial No. 88597944 9 homebuilding and remodeling and renovation services are expensive, or that consumers are particular about their homes. Thus, this factor weighs in Applicant’s favor. D. The Number and Nature of Similar Marks in Use for Similar Services Applicant argues, based on third-party applications and registrations, that “[t]he cited marks exist in a crowded field of identical and closely similar marks.” 6 TTABVUE 22-26; October 7, 2020 Office Action response TSDR 27-39; May 22, 2020 Office Action response TSDR 26-40. The evidence does not support the argument. Third-party applications are proof of nothing other than that they were filed. In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 n.7 (TTAB 2007). The third-party registrations are also irrelevant on this point because they are “not evidence of third-party use of the registered marks in the marketplace, for purposes of the sixth du Pont factor.” In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (citing Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009). See also AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) (“The existence of these registrations is not evidence of what happens in the market place or that customers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive.”). In any event, the applications and registrations Applicant cites are either for different marks (SHJV in stylized form, Application Serial No. 87886842 and JHI, Serial No. 88597944 10 Reg. No. 5170897), or different goods and services (Reg. Nos. 5541278, 5570957, 5503564, 4032369 and 6046172), than those at issue here. See Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693-95 (Fed. Cir. 2018); In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017) (“Symbolic has not pointed to any record evidence to support a finding that multiple third parties use the mark I AM for the listed goods in its class 3 and 9 applications.”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) (“The relevant du Pont inquiry is ‘[t]he number and nature of similar marks in use on similar goods’ … It is less relevant that ‘Century is used on unrelated goods or services such as ‘Century Dental Centers’ or ‘Century Seafoods.’”) (quoting Weiss Assocs. v. HRL Assocs., 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990)). This factor is neutral. E. The Cited Mark’s Lack of Fame Applicant correctly points out that there is no evidence that the cited mark is famous, 6 TTABVUE 26-27, but that is irrelevant. Indeed, “the owner of the cited registration is not a party to this ex parte appeal, and the Examining Attorney is under no obligation to demonstrate the fame of a cited mark.” In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016). See also In re Majestic Distilling Co., 65 USPQ2d at 1205 (“Although we have previously held that the fame of a registered mark is relevant to likelihood of confusion, DuPont, 476 F.2d at 1361, 177 USPQ at 567 (factor five), we decline to establish the converse rule that likelihood of confusion is precluded by a registered mark’s not being famous.”); In re Mr. Recipe, Serial No. 88597944 11 LLC, 118 USPQ2d 1084, 1086 (TTAB 2016) (“in an ex parte appeal the ‘fame of the mark’ factor is normally treated as neutral because the record generally includes no evidence as to fame.”); In re Davey Prods., 92 USPQ2d at 1204 (“[I]t is settled that the absence of such evidence is not particularly significant in the context of an ex parte proceeding.”); In re Big Pig Inc., 81 USPQ2d 1436, 1439 (TTAB 2006) (“It is not necessary that a registered mark be famous to be entitled to protection against a confusingly similar mark.”). This factor is neutral. F. Applicant’s Good Faith Finally, Applicant claims that it “was unaware of and had no intent to trade upon the registrant[’s] reputation.” 6 TTABVUE 27. While an intent to “trade upon” Registrant’s mark could be relevant, Applicant’s innocence is not. J&J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991) (“Whether there is evidence of intent to trade on the goodwill of another is a factor to be considered, but the absence of such evidence does not avoid a ruling of likelihood of confusion.”). This factor is also neutral.9 II. Conclusion The services are legally identical, the channels of trade and classes of consumers overlap and the marks are similar. These factors outweigh consumer sophistication 9 Applicant also argues “that there is no market interface between the Applicant’s mark and the cited registration.” 6 TTABVUE 26. It is unclear what exactly Applicant is referring to, but to the extent it is arguing that “there is no market interface” because Registrant is based in Ireland and Applicant is based in Texas, the point is not well-taken. Registrant owns a use-based, geographically unrestricted United States trademark registration, entitling it to use the cited mark in Texas and the rest of the United States, and Applicant seeks a geographically unrestricted registration of its own. Serial No. 88597944 12 and care in purchasing. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986); Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); see also, HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweighed sophisticated purchasers, careful purchasing decision, and expensive goods). Confusion is likely. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed.