L.A. Brands, LLC

Trademark Trial and Appeal BoardNov 28, 2016

No. 86311070 (T.T.A.B. Nov. 28, 2016)

This Opinion is not a Precedent of the TTAB Mailed: November 28, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re L.A. Brands, LLC _____ Serial No. 86310904 Serial No. 86311070 _____ Joshua A. Schaul of Sherman IP LLP, for L.A. Brands, LLC David E. Tooley, Jr., Trademark Examining Attorney, Law Office 112, Angela Bishop Wilson, Managing Attorney. _____ Before Wellington, Gorowitz and Heasley, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: L.A. Brands, LLC (“Applicant”) seeks registration on the Principal Register of the mark 1776 (in standard characters)1 and the word and design mark ,2 1 Application Serial No. 86310904 (“the ‘904 standard character application”) filed on June 16, 2014, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as January 11, 2013. 2 Application Serial No. 86311070 (“the ‘070 word and design application) filed on June 16, 2014, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as January 11, 2013. Serial Nos. 86310904, 86311070 - 2 - both for “clothing, namely, tops, bottoms, shirts, sweatshirts, jackets, dresses and pants” in International Class 25. The Trademark Examining Attorney has refused registration of Applicant’s marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered mark for “hats, sweatshirts, T-shirts” in International Class 25 as to be likely to cause confusion or mistake, or to deceive.3 After the Trademark Examining Attorney made each refusal final, Applicant appealed to this Board. Because the cases have common issues of fact and of law, and the records are largely identical, we will decide the two appeals in this single opinion. See In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1043 (TTAB 2013); In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012). See generally TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1214 (2016). Where appropriate, we have taken into account relevant factual differences in the cases. We affirm the refusals to register. 3 Registration No. 4612829, issued on the Principal Register on September 30, 2014. The mark consists of the stylized literal element “1776” above “UNITED,” also stylized in antiqued script, with a disjointed snake design appearing between the literal elements. Serial Nos. 86310904, 86311070 - 3 - I. Evidentiary Issue Before proceeding to the merits of the refusals, we address an evidentiary matter. Applicant has attached exhibits to its main and reply briefs. With respect to the ‘904 standard character Application, it has attached: • Pages downloaded from Registrant’s website on July 18, 2016; • An excerpt from Wikipedia, downloaded on July 18, 2016, concerning the “join or die” woodcut cartoon, first published in 1754, depicting a segmented snake, similar to a design element in Registrant’s cited mark;4 and • A Wikipedia article about world events that occurred during the year 1776.5 With respect to Applicant’s ‘070 word and design application, it has attached the above exhibits, plus: • A list of registrations downloaded from the USPTO’s Trademark Electronic Search System (“TESS”) on October 10, 2016; and • A depiction of various countries’ flags.6 As the Examining Attorney correctly observes, the record in an application should be complete prior to the filing of an appeal. Trademark Rule 2.142(d), 37 CFR § 2.142(d). Exhibits attached to a brief that were not made of record during examination are untimely, and generally will not be considered. Id. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012). See In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014) (untimely 4 Applicant’s brief, 6 TTABVUE 13 et seq. 5 Applicant’s reply brief, 9 TTABVUE 9 et seq. 6 Applicant’s reply brief, 9 TTABVUE 9-44. Serial Nos. 86310904, 86311070 - 4 - evidence given no consideration); In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013); In re Jump Designs LLC, 80 USPQ2d 1370, 1372 (TTAB 2006). These exhibits attached to Applicant’s briefs were not made of record during examination and will not be considered. We hasten to note, however, that earlier, during the course of examination, Applicant submitted pages from Registrant’s website and an article about laurel wreaths, both of which will be considered, as they are properly of record. II. Analysis We base our determination of likelihood of confusion under Section 2(d) on an analysis of all of the probative facts in evidence that are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., __U.S. __, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor that is relevant, and have treated any other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). 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, 29 (CCPA 1976); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016). Serial Nos. 86310904, 86311070 - 5 - A. Relatedness of the Clothing Goods, Channels of Trade, and Classes of Customers The second and third DuPont factors concern “the similarity or dissimilarity and nature of the goods or services as described in an application or registration…” and “the similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont, 177 USPQ 567. The second DuPont factor considers whether the consuming public may perceive the respective goods as related enough to cause confusion about their source. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014). To make this determination, we compare the goods as they are identified in the applications and the cited registration See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Registrant’s identified goods are “hats, sweatshirts, T-shirts,” and Applicant’s goods, identified in both applications, are “clothing, namely, tops, bottoms, shirts, sweatshirts, jackets, dresses and pants.” The sweatshirts in all of the applications are identical. Applicant’s broadly-worded “tops, and shirts” encompass Registrant’s more narrowly-worded “T-shirts.” See, e.g., 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.’”). Therefore, the goods are identical in part. “[I]t is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the Serial Nos. 86310904, 86311070 - 6 - application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126n. 5 (TTAB 2015) (citing Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014)). Even where the goods are not identical, they are highly related clothing items. See Kangol Ltd v. KangaROOS U.S.A. Inc., 23 USPQ2d 1945, 1946 (Fed. Cir. 1992) (golf shirts similar if not identical to athletic shirts “and it is unlikely that the ordinary purchaser will distinguish one from the other.”). The Examining Attorney has submitted ten use-based third-party registrations as evidence that Applicant’s remaining identified clothing items, “jackets, dresses, bottoms and pants,” may emanate from the same source as Registrant’s “hats, sweatshirts and T-shirts.” 7 Examples are: Mark Registration No. Relevant Clothing Goods LOVE YOUR IMAGE 4819083 Bottoms, hats, shorts, T-shirts, tops FIT HUSTLE 4692379 Hats, shorts, T-shirts, tank tops SAPPHIRE INK 4715552 Clothing for men, women and children, namely, dresses; skirts; tops, bottoms; blouses; hooded tops; hooded jackets; jackets; jeans; leggings; overalls; pants; shirts; shorts; sweat shirts; sweat pants; sweaters; t-shirts; vests; scarves; belts for clothing; hats BEETLEJUICE 4863369 Clothing for men, women and children, namely, shirts, t-shirts, sweatshirts, tank tops, hats, caps 7 Dec. 4, 2015 Office Action pp. 5-29. Serial Nos. 86310904, 86311070 - 7 - These third-party registrations serve to suggest that the varied types of clothing goods they list may emanate from the same source under the same mark. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) aff’d per curiam, 864 F.2d 149 (Fed. Cir.1988). Since the cited Registration and the subject Applications set no restrictions on channels of trade or price points, their identified clothing goods may be presumed to travel in the normal channels of trade—i.e., department stores and clothing retail shops--where they would be offered to the same classes of customers seeking articles of clothing. See Kangol v. KangaROOS U.S.A., 23 USPQ2d at 1946. Consequently, the second and third DuPont factors weigh in favor of finding a likelihood of confusion. B. Comparison of the Marks Under the first DuPont factor, we compare Applicant’s and Registrant’s marks in their entireties, taking into account their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567; Stone Lion, 110 USPQ2d at 1160; Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). Applicant devotes its brief to disputing the similarity of the marks, correctly noting that “The question of whether a mark sought to be registered is not whether people will confuse the marks, but rather whether the marks will confuse people into believing that the goods they identify emanate from Serial Nos. 86310904, 86311070 - 8 - the same source.”8 Citing In re Majestic Distilling Co., 65 USPQ2d at 1205. Here, where the trademarks appear on substantially identical goods travelling through the same channels of trade to the same classes of customers, the degree of similarity needed to find that those customers are likely to be confused declines commensurately. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). Sight Applicant initially contends that Registrant’s composite mark, is visually distinct from its ‘904 standard character mark, 1776, if one looks at Registrant’s mark as a whole, as one must under the anti-dissection rule, taking into account the additional literal term UNITED and the snake design.9 While the similarity or dissimilarity of the marks is determined based on the marks in their entireties, “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 National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) quoted in Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016). In a composite mark comprising a design and words, “the verbal position of the mark is the one most likely to indicate the origin of the goods to which it is affixed.” In re 8 Applicant’s brief, 6 TTABVUE 5. 9 Applicant’s brief, 6 TTABVUE 6-7. Serial Nos. 86310904, 86311070 - 9 - Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)). See also Bond v. Taylor, 119 USPQ2d at 1055. Here, the central, dominant component of Registrant’s mark is “1776,” appearing in large stylized letters. Prospective customers encountering Registrant’s mark are likely to notice the lead term “1776”, to remember it, and to look for it when shopping. See Palm Bay Imps., 73 USPQ2d at 1692; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). That same dominant component, “1776”, forms the entirety of Applicant’s standard character mark. Applicant maintains that likelihood of confusion does not automatically occur where a junior user’s mark contains part of another mark: “Here, the marks share the term 1776 in common, but the single common term and nothing more, is not enough to support a finding of likelihood of confusion.”10 While it is true that the incorporation of one mark into another does not dictate a finding of likelihood of confusion, it does increase the similarity between the marks under the first DuPont factor. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (applicant’s mark VANTAGE 10 Applicant’s brief, 6 TTABVUE 9. Serial Nos. 86310904, 86311070 - 10 - TITAN for medical magnetic resonance imaging diagnostic apparatus confusingly similar to TITAN for medical ultrasound diagnostic apparatus); In re Mr. Recipe, LLC, 118 USPQ2d 1084 (TTAB 2016) (JAWS DEVOUR YOUR HUNGER similar to JAWS). Although Registrant’s mark contains additional word and design elements, Applicant’s standard character mark, used on similar items of clothing, “would appear to prospective purchasers to be a shortened form of registrant’s mark.” In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women's clothing stores and women's clothing likely to cause confusion with CREST CAREER IMAGES for uniforms including items of women’s clothing). The same shortcoming befalls Applicant’s ‘070 word and design mark, . As with Registrant’s mark, “1776”, stacked vertically, is the dominant component of the mark. That dominant component at the very center of the mark is emphasized by its surrounding design elements. In Applicant’s own words, “The mark consists of the numbers ‘1776’ in the center of a circle, with leaves to the left and right of the numbers, multiple stars above and one star below the numbers.”11 The component “1776” is thus the mark’s centerpiece, set off by encircling design elements, which act to focus purchasers’ attention upon it, leaving an overall impression of similarity with Registrant’s mark: Keeping in mind that the marks may not even be seen at the same time, ordinary purchasers who are familiar with [Registrant’s] mark on clothing, upon later encountering applicant’s mark on identical and/or closely related clothing …, would not necessarily remember fine details about the mark they had previously seen, given their hazy and imperfect recall, and 11 Description of the mark in App. Serial No. 86311070. Serial Nos. 86310904, 86311070 - 11 - they may remember the marks as being the same. Even those purchasers who notice and remember the differences in the marks, or who are, as applicant claims, knowledgeable about “sponsorship activities,” are likely to believe in view of the overall similarities in the marks that [Registrant] is licensing a slightly different version of the same mark and mistakenly assume that applicant’s brand of clothing … is therefore sponsored by [Registrant]. Nike, Inc. v. WNBA Ent. LLC, 85 USPQ2d 1187, 1199-1200 (TTAB 2007). The respective marks are therefore more notable for their visual similarity than their dissimilarity. Sound Since the design elements—the circle, laurel wreath and stars—in Applicant’s ‘070 mark are unpronounceable, both of Applicant’s marks would be pronounced the same way: “Seventeen Seventy-Six”—the phonetic equivalent of the dominant component of Registrant’s mark. See In re Davia, 110 USPQ2d at 1814. While Registrant’s mark also includes the word “UNITED”, this word is the less distinctive term, yielding the impression that Registrant’s mark is the longer version of the same brand of clothing. United States Shoe Corp., 229 USPQ at 709; Nike v. WNBA, 85 USPQ2d at 1199. The marks therefore are pronounced similarly. Connotation and Commercial Impression Applicant asseverates that Registrant’s mark was designed “to evoke a sense of patriotism found in our forefathers,” whereas “[t]here is no such patriotic impression in Appellant’s marked goods.”12 Its standard character mark “1776” could refer to any of a number of events that took place throughout the world that year, Applicant 12 Applicant’s brief, 6 TTABVUE 11; Registrant’s website, 1776United.com, November 12, 2015 Response to Office Action pp. 7-9. Serial Nos. 86310904, 86311070 - 12 - insists,13 and the two branches of leaves in its word and design mark, , “are reminiscent of a laurel wreath which are traditionally symbols of martial victory, crow[n]ing a successful commander during his triumph.”14 However, our determination of a mark’s likely connotation and commercial impression are based on the perspective of the consuming public, not an applicant’s intention. UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1886 (TTAB 2011). “The proper test is ‘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., 101 USPQ2d at 1721 (citation omitted). To the relevant public, American consumers, Applicant’s ‘904 mark, “1776” conveys the same commercial impression as Registrant’s mark, as it is unmistakably the year that the Declaration of Independence was adopted.15 As the Examining Attorney observes, “the term 1776 is imbued with patriotic meaning”; consumers are likely to see both Applicant’s and Registrant’s marks as patriotic, 13 Applicant’s reply brief, 9 TTABVUE 7. 14 Applicant’s brief, 6 TTABVUE 11 (‘070 Application), citing Wikipedia article re laurel wreaths, Nov. 12, 2015 Response to Office Action pp. 10-13. “[T]he Board will consider evidence taken from Wikipedia so long as the non-offering party has an opportunity to rebut that evidence by submitting other evidence that may call into question the accuracy of the particular Wikipedia information. Our consideration of Wikipedia evidence is with the recognition of the limitations inherent with Wikipedia (e.g., that anyone can edit it and submit intentionally false or erroneous information).” In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007). 15 “Independence Day: July 4, celebrated in the United States to commemorate the adoption in 1776 of the Declaration of Independence.” The American Heritage Dictionary of the English Language, CredoReference.com, Aug. 5, 2016, Examining Attorney’s brief, 8 TTABVUE 5 (‘904 Application), 8 TTABVUE 7 (‘070 Application). Serial Nos. 86310904, 86311070 - 13 - either because patriotism is expressly invoked or because it is inextricably linked to the year 1776.16 Furthermore, Applicant’s claimed “laurel wreath” design is also consistent with patriotism, as it represents martial victory in the Revolutionary War, and suggests the “honor and glory won for great achievement,” 17 i.e., the achievement of independence. Compared in their entireties, Applicant’s marks are similar to Registrant’s, taking into account their appearance, sound, connotation and commercial impression. The first DuPont factor therefore also weighs in favor of finding a likelihood of confusion. III. Conclusion After considering all of the evidence of record and arguments pertaining to the DuPont likelihood of confusion factors, the first, second and third DuPont factors favor a finding of likelihood of confusion. Accordingly, we find that there is a likelihood of confusion between Applicant’s and Registrant’s marks for the identified goods. Decision: The refusals to register Applicant’s mark 1776 and in Application Serial Nos. 86310904 and 86311070 are affirmed. 16 Examining Attorney’s brief, 8 TTABVUE 7 (‘070 Application); 8 TTABVUE 3 (‘904 Application). 17 The American Heritage Dictionary of the English Language, CredoReference.com, Sept. 9, 2016, Examining Attorney’s brief, 8 TTABVUE 6n.1 (‘070 Application).