Kingdom Photo Booth, LLC

Trademark Trial and Appeal Board

Jan 29, 2016

No. 86043539 (T.T.A.B. Jan. 29, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: January 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kingdom Photo Booth, LLC
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Serial No. 86043539
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Matthew H. Swyers of The Trademark Company
for Kingdom Photo Booth, LLC.

Kristin Carlson, Trademark Examining Attorney, Law Office 105,
Susan Hayash, Managing Attorney.
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Before Quinn, Shaw and Adlin,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Kingdom Photo Booth, LLC (“Applicant”) filed an application to register the
mark PIXIE (in standard characters) for “interactive photo kiosks for capturing,
printing and uploading digital images for future use” in International Class 9.1
The trademark examining attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when
used in connection with Applicant’s goods, so resembles the previously-registered
1 Application Serial No. 86043539, filed August 21, 2013 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce
on August 1, 2013.

Application Serial No. 86043539

mark PIXI BOOTH (in standard characters; “BOOTH” disclaimed) for “video and
photographic equipment, namely, customizable portable video and photo booths
comprised of camera, flash, printer and touchscreen, and interactive photo kiosks
for capturing, printing and uploading digital images for future use” in International
Class 92 as to be likely to cause confusion.
When the examining attorney made the refusal final, Applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that the examining attorney has violated the “anti-dissection
rule” by failing to consider Registrant’s mark in its entirety.3 Applicant also
contends that the marks convey different meanings, with Applicant’s connoting a
mythical creature; or, alternatively, that the marks share a descriptive term
referring to pixels of a digital photograph. In either case, Applicant urges, the
marks are different enough to avoid a likelihood of confusion. Applicant in its brief
“concedes[s] the similarity of the goods.” (4 TTABVUE 14). Applicant also relies
2 Registration No. 4641623, issued November 18, 2014.
3 With respect to its own mark, Applicant earlier argued:

Taking Applicant’s mark as a whole and without dissecting the
individual components, the overall sight, sound, and meaning of
Applicant’s mark is quite different when compared to the cited
registrations [sic]. By ignoring these distinctive elements, the
Examining Attorney has essentially changed the mark itself. An
examination of the respective marks as a whole clearly demonstrates
that the appearance, sound and significance of the other components of
Applicant’s PIXI [sic] mark lessens, if not altogether removes, any
likelihood that consumers will confuse Applicant’s mark with the cited
registrations [sic]. (Response, March 3, 2015).

Given that Applicant’s mark is PIXIE in standard characters, Applicant’s earlier reference
to “other components” of its mark is not understood, a point originally made by the
examining attorney. (Office action, March 25, 2015).

2

Application Serial No. 86043539

upon the absence of evidence of any instances of actual confusion. Applicant
submitted product literature regarding the goods sold under the respective marks.
The examining attorney maintains that the marks are similar and that the
goods are identical. The examining attorney submitted portions of third-party
websites and dictionary evidence.
Our determination under Section 2(d) is based on an analysis of all of the facts
in evidence that are relevant to the factors bearing on the likelihood of confusion. In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (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).
As to the second du Pont factor regarding the similarity of the goods,
Applicant’s goods are identified as “interactive photo kiosks for capturing, printing
and uploading digital images for future use” and Registrant’s goods include
“interactive photo kiosks for capturing, printing and uploading digital images for
future use.” Accordingly, the goods are identical in part, and otherwise closely
related. As noted above, Applicant concedes this factor, and indeed the product
literature on the respective goods confirms their identity. Given the identity of the
goods, we presume that the goods travel through all usual channels of trade and are
offered to all normal potential purchasers. 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);
3

Application Serial No. 86043539

American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith & Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). 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).
The identity of the goods, trade channels and purchasers are factors that weigh
heavily in favor of a finding of a likelihood of confusion.4
With respect to the first du Pont factor dealing with the similarity of the marks,
we must compare 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 In re E. I. du Pont de Nemours & Co., 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) (citation omitted).
In comparing the marks, we are mindful that where, as here, the goods are
legally identical in part, the degree of similarity between the marks necessary to
4 Applicant’s earlier argument that the goods are “traded and marketed differently” based
on the different geographical areas where the goods are sold is irrelevant. Simply put, the
cited registration has no geographical restrictions, thereby affording Registrant nationwide
rights that include Applicant’s area.
4

Application Serial No. 86043539

find likelihood of confusion need not be as great as where there is a recognizable
disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 101
USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); United Global Media Grp., Inc. v.
Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007).
Although marks must be considered in their entireties, it is settled that one
feature of a mark may be more significant than another, and it is not improper to
give more weight to this dominant feature in determining the mark’s commercial
impression. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) (“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 consideration of the marks in their entireties. Indeed, this type
of analysis appears to be unavoidable.”).
With respect to Registrant’s mark, the generic term “BOOTH” has been
disclaimed apart from the mark. In view of the generic nature of this disclaimed
term, PIXI is the dominant portion of Registrant’s mark.5 See, e.g., In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (“DELTA,”
not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE
DELTA CAFE).
5 We take judicial notice (pursuant to the examining attorney’s request) of the dictionary
evidence essentially equating the terms “booth” and “kiosk.” (6 TTABVUE 15-19).
5

Application Serial No. 86043539

The dominant portion of Registrant’s mark, PIXI, is essentially identical to the
entirety of Applicant’s mark, PIXIE. The terms PIXI and PIXIE are identical in
sound, and very similar in appearance, the only difference being the addition of the
final letter “E” in Applicant’s mark.
With respect to meaning, the examining attorney submitted dictionary evidence
showing that the terms “pixi” and “pixie” may be used interchangeably to refer to
mythical creatures of folklore; and that they are spelling variants of a girl’s given
name. (Office action, March 25, 2015). In either case, the terms would appear to be
arbitrary when used in connection with the goods. To the extent that the terms
“pixi” and “pixie” might be perceived as referring to “pixel” due to the fact that the
goods produce digital photographs that contain pixels, the terms are both
suggestive, conveying the same idea. Thus, it is likely that purchasers will view the
marks as having similar meanings.
In sum, the similarities of the marks PIXIE and PIXI BOOTH in sound,
appearance and meaning result in marks that, when considered in their entireties,
engender substantially similar overall commercial impressions.
The first du Pont factor also weighs heavily in favor of a finding of likelihood of
confusion.
Applicant’s reliance, in this ex parte proceeding, on the absence of evidence of
actual confusion is misplaced. It is well settled that the relevant test is likelihood of
confusion, not actual confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Weiss Assocs. Inc. v. HRL
6

Application Serial No. 86043539

Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990); In re
Big Pig, 81 USPQ2d 1436, 1439-40 (TTAB 2006). See In re Kangaroos U.S.A., 223
USPQ 1025, 1026-27 (TTAB 1984). In any event, Applicant’s mark has only been in
use for two years, and there is no evidence that there has been an opportunity for
confusion to occur if it were likely to occur. In re Kangaroos U.S.A., 223 at 1026-27.
Moreover, the lack of evidence of actual confusion carries little weight, especially in
an ex parte context. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003).
We conclude that purchasers familiar with Registrant’s “interactive photo
kiosks for capturing, printing and uploading digital images for future use” sold
under the mark PIXI BOOTH would be likely to mistakenly believe, upon
encountering Applicant’s mark PIXIE for the identical goods, that the goods
originate from or are associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.
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