Lanceco Industries, Inc.

Trademark Trial and Appeal BoardAug 1, 2016

No. 86098868 (T.T.A.B. Aug. 1, 2016)

This Opinion is not a Precedent of the TTAB Mailed: August 1, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Lanceco Industries, Inc. _____ Serial No. 86098868 _____ Dara L. Onofrio of Onofrio Law, for Lanceco Industries, Inc. Linda A. Powell, Trademark Examining Attorney, Law Office 106, Mary I. Sparrow, Managing Attorney. _____ Before Mermelstein, Shaw and Gorowitz, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Lanceco Industries, Inc. (“Applicant”) seeks registration on the Principal Register of the mark CHARMS FOR CHARITY in standard characters for “jewelry,” in International Class 14.1 The 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, as used in connection 1 Application Serial No. 86098868 was filed under Section 1(b) of the Trademark Act, 15 U.S.C. § 1(b), on October 23, 2013. On August 19, 2014, Applicant filed an Amendment to Allege Use with allegations of first use anywhere and first use in commerce of October 7, 2013. Serial No. 86098868 - 2 - with Applicant’s goods, so resembles the mark CHARITY CHARMS2 in standard characters for “Jewelry, namely, bracelets, necklaces, charms, key chains, and pearls designed for fundraising,” in International Class 14, as to be likely to cause confusion. The Examining Attorney also refused registration on the ground that Applicant’s mark is merely descriptive of Applicant’s goods, under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusals were made final, Applicant appealed and requested reconsideration.3 The Examining Attorney denied the request for reconsideration, and the appeal was resumed. We affirm the refusals to register. I. Refusal under Section 2(d). We first address the Examining Attorney’s refusal on the ground that Applicant’s mark is likely to cause confusion with the mark CHARITY CHARMS. Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts in evidence 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 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the goods and the similarities between the marks. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental 2 Registration No. 3824869, issued July 27, 2010. 3 In the request for reconsideration, Applicant also sought to amend the application to seek registration on the Supplemental Register, if the mark was otherwise found to be registrable. In light of the continuation of the Section 2(d) refusal, Applicant has withdrawn the amendment to the Supplemental Register. Serial No. 86098868 - 3 - inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A. The similarity or dissimilarity of the goods, trade channels, and classes of consumers. We start our analysis with the second and third du Pont factors and look at the relationship between the goods at issue, the channels of trade in which they travel and the classes of consumers. We base our evaluation on the goods as they are identified in the application and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s goods are “jewelry” and Registrant’s goods are “jewelry, namely, bracelets, necklaces, charms, key chains, and pearls designed for fundraising.” The goods are identical inasmuch as Applicant’s broadly-worded “jewelry” encompasses Registrant’s more narrowly-worded “jewelry, namely, bracelets, necklaces, charms, key chains, and pearls designed for fundraising.” See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Turning to the trade channels and classes of consumers, since Applicant’s goods and those in the cited registration are unrestricted, they are presumed to move in all channels of trade normal for such goods and are available to all potential classes of ordinary consumers.. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (Absent restrictions in an application and/or registration, identical goods are “presumed to travel in the same channels of trade to the same class of Serial No. 86098868 - 4 - purchasers.”) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Applicant argues that its goods and Registrant’s goods are nevertheless “distinct in that the CHARMS FOR CHARITY are directed to the general public whereas the CHARITY CHARMS are utilized by corporations for fundraising efforts and are branded under the respective corporation.”4 This argument is unavailing. When determining the relationship between the goods and services, [t]he authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed. Octocom, 16 USPQ2d at 1787. Thus, the du Pont factors relating to similarity of the goods, similarity of established, likely to continue channels of trade, and classes of consumers favor a finding of likelihood of confusion. B. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. Next, we consider the similarity of the marks. In comparing the marks we must consider their 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, 1692 (Fed. Cir. 2005). The emphasis of our analysis must be on the recollection of the average purchaser who normally retains a general, rather than 4 Applicant’s Br., p. 9; 9 TTABVUE 10. Serial No. 86098868 - 5 - specific, impression of trademarks. Although we consider the mark as a whole, “in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark. . . .” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant’s mark is CHARMS FOR CHARITY whereas Registrant’s mark is CHARITY CHARMS. We find the marks are highly similar because Applicant has simply transposed the words in Registrant’s mark and added the preposition “for.” Both marks create the same commercial impression suggesting an association between the charms and charity awareness or charity fundraising. Where the primary difference between marks is the transposition of the elements that compose the marks, and where this transposition does not change the overall commercial impression of the marks, there may be a likelihood of confusion. See, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials, and AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals, likely to cause confusion); In re Gen. Tire & Rubber Co., 213 USPQ 870, 871 (TTAB 1982) (holding SPRINT STEEL RADIAL for pneumatic tires, and RADIAL SPRINT for radial tires, likely to cause confusion). Applicant argues that “the Registration for CHARITY CHARMS disclaims the term CHARMS, which puts the emphasis on the term CHARITY.” We disagree. A disclaimer does not remove the disclaimed matter from the mark. The mark must Serial No. 86098868 - 6 - still be regarded as a whole, including the disclaimed matter, in evaluating its similarity to other marks. See Nat’l Data, 224 USPQ at 751 (“The technicality of a disclaimer . . . has no legal effect on the issue of likelihood of confusion.”). Moreover, even if we accept that CHARITY is the dominant term in Registrant’s mark, this does not reduce the similarity of the marks because both marks contain the same terms and create the same commercial impression. Wine Soc’y of Am., 12 USPQ2d at 1142 (“[W]here the transposition of words does not change the overall commercial impression, confusion has been found.”). Applicant also argues that the marks differ in appearance because they have a different number of words and because they sound different when spoken.5 Regarding the number of words in the marks, we find this to be a minor difference in appearance. Additionally, we disagree that the marks sound different when spoken. The words CHARITY and CHARMS both begin with the letters “CHAR-” which creates the same alliterative effect in both marks, regardless of word order. The minor differences between the marks are insufficient to distinguish them in light of the greater similarities. In sum, when we consider the marks in their entireties, we find them to be similar in terms of appearance, sound, connotation and commercial impression. This du Pont factor weighs in favor of a finding of a likelihood of confusion. C. Conclusion. We have considered all of the arguments and evidence of record, including any not specifically discussed herein, and all relevant du Pont factors. We find that 5 Applicant’s Br., p. 6; 9 TTABVUE 7. Serial No. 86098868 - 7 - Applicant’s mark so resembles the cited registered mark as to be likely to cause confusion, mistake or deception as to the source of Applicant’s goods. II. Refusal under Section 2(e)(1). We turn next to the Examining Attorney’s refusal on the ground that Applicant’s mark is merely descriptive of the identified goods. A mark is merely descriptive of goods within the meaning of Section 2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the mark is used, not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, we evaluate whether someone who knows what the goods are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). A mark need not immediately convey an idea of each and every specific feature of the goods in order to be considered merely descriptive; it is enough if it describes one significant attribute, function or property of the goods. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Serial No. 86098868 - 8 - As the Examining Attorney has shown, a “charm” is “[a] small ornament, such as one worn on a bracelet”6 and “charity” is “[h]elp or money given voluntarily to those in need.”7 The Examining Attorney argues that “[c]onsumers would understand the wording in the mark to describe charms that are for some charitable purpose.”8 Applicant’s own website confirms that a portion of the proceeds from the sale of Applicant’s jewelry is given to charity. For example, one excerpt from Applicant’s website states that a “portion of the sales from this ‘Charms For Charity [music] Bangle’ goes directly to Music Saves Lives.org.”9 Similarly, an Internet excerpt from “Littman Jewelers” indicates that a “portion of the sales from this ‘Charms for Charity [autism] Bangle’ goes directly to Autism Speaks.org.”10 We find that Applicant’s mark, CHARMS FOR CHARITY conveys an immediate idea of the purpose or use of the goods, namely, to raise money for various charities through the sale of jewelry, specifically, charms. Abcor, 200 USPQ at 217. Applicant argues that the mark is not descriptive because “[c]onsumers are not purchasing the items as a charitable donation, but rather the applicant itself is donating a portion of the proceeds from consumer sales to a designated charity.”11 This is a distinction without a difference. The Internet excerpts plainly show that 6 Office Action of February 18, 2014, p. 7. 7 Office Action of September 5, 2014, p. 8. 8 Examining Attorney’s Br., p. 10; 11 TTABVUE 10. 9 Applicant’s response to Office Action dated March 5, 2015, p. 22. 10 Id. at 24. 11 Applicant’s Br., p. 11; 9 TTABVUE 11. Serial No. 86098868 - 9 - prospective consumers are advised that a portion of the sales will be donated to charities. How the money gets to the charities does not change the fact that the mark immediately conveys the idea that the purchase of a charm will benefit the associated charity. Accordingly, we find that Applicant’s mark is merely descriptive of Applicant’s goods within the meaning of Trademark Act Section 2(e)(1). Decision: The refusal to register Applicant’s mark is AFFIRMED on the ground of likelihood of confusion with the mark in Reg. No. 3824869, under Trademark Act Section 2(d); and on the ground that the mark is merely descriptive of Applicant’s goods, under Trademark Act Section 2(e)(1).