Landscape Structures, Inc.

Trademark Trial and Appeal BoardMar 31, 2011

No. 77724146 (T.T.A.B. Mar. 31, 2011)

Mailed: March 31, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ___________ Trademark Trial and Appeal Board ___________ In re Landscape Structures, Inc. ___________ Serial No. 77724146 ___________ Christopher L. Holt of Westman Champlin & Kelly for Landscape Structures, Inc. Renee D. McCray, Trademark Examining Attorney, Law Office 111 (Craig D. Taylor, Managing Attorney). ____________ Before Walters, Kuhlke and Wolfson, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Landscape Structures, Inc. has filed an application to register the standard character mark TODDLERTOWN on the Principal Register for “playground equipment, namely, permanent outdoor playground fixtures sold to consumers through channels of trade that do not include retail stores in the field of children's products, the permanent outdoor playground fixtures including slides, ladders, bridges, climbing units, ramps and walkways, decks, protective barriers, tunnels, posts, and beams sold in different THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77724146 2 combinations for permanent outdoor installation, or sold in different combinations as a unit for permanent outdoor installation,” in International Class 28.1 The examining attorney has issued a final refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on the ground that applicant’s mark so resembles the mark shown below, previously registered for “retail store services in the field of children’s products,” in International Class 35,2 that, if used on or in connection with applicant’s goods, it would be likely to cause confusion or mistake or to deceive. Applicant has appealed. Both applicant and the examining attorney have filed briefs. We reverse the refusal to register. Before we begin our analysis, we note that applicant submitted evidence with its appeal brief. The examining attorney did not object, but she also did not treat the 1 Serial No. 77724146, filed April 28, 2009, based on an allegation of a bona fide intention to use the mark in commerce. 2 Registration No. 2436811, issued March 20, 2001. The registration is owned by Foodtown. [Section 15 affidavit acknowledged; renewed.] Serial No. 77724146 3 evidence as being of record. All evidence must be submitted prior to appeal, therefore, because this evidence is untimely, we have given it no consideration. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, “[w]hile it must consider each factor for which it has evidence, the Board may focus its analysis on dispositive factors, such as similarity of the marks and relatedness of the goods.” Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001). See also Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1357, 192 USPQ 24 (CCPA 1976)(“[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”); and In re Azteca Restaurant Serial No. 77724146 4 Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited therein. It is not necessary that the respective goods and services be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis. That is, the issue is not whether consumers would confuse the goods and services themselves, but rather whether they would be confused as to the source of the goods and services. See Miss Universe L.P. v. Community Marketing Inc., 82 USPQ2d 1562, 1568 (TTAB 2007); In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). The Marks We turn to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impressions that confusion as to the Serial No. 77724146 5 source of the goods or services offered under the respective marks is likely to result. H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715 (TTAB 2008). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See In re Association of the United States Army, 85 USPQ2d 1264, 1269 (TTAB 2007); and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although the marks at issue must be considered in their entireties, it is well 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 commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). The registered mark consists of the term TODDLER TOWN, with TODDLER and TOWN connected by the background design, by the final “R” in TODDLER wrapping around the “T” in TOWN, and by the line extending from the design behind TODDLER under the word TOWN. The two words are distinctly shown in different fonts with different background designs. The TOWN portion of the mark appears with white letters on a black background carrier, and a flag flies from the “W” over the “N.” The TODDLER portion of the mark appears as white letters with a thin black outline and the background Serial No. 77724146 6 consists of three lightly drawn children’s building blocks, each with a letter “A,” “B,” or “C.” Because these letters appear on the building blocks and behind the predominant wording in the mark, they are unlikely to be perceived as part of the spoken portion of the mark. While there is a distinctive design element to this mark, we agree with the examining attorney that, in considering the overall commercial impression of the registered mark, the wording, TODDLER TOWN, predominates over the design portion. Not only is the wording TODDLER TOWN superimposed over the design background, but it is the wording TODDLER TOWN that would be used by purchasers in referring to registrant’s retail store services. The wording would make a greater impression on purchasers and is the portion that is more likely to be remembered as the dominant and source-signifying portion of the registered mark. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001) (“words are normally accorded greater weight because they would be used by purchasers to request the goods”). See also, e.g., In re Appetito Provisions Co., 3 USPQ2d 1553 (1987). Thus, although the marks have certain differences, when we compare them in their entireties we find that on the whole they are similar in appearance, sound, connotation and commercial impression, and that the design element with the Serial No. 77724146 7 letters “A,” “B” and “C” appearing only as part of the design in the registered mark, is not sufficient to distinguish the marks. However, we note the court’s statement in In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003), that “similarity is not a binary factor but is a matter of degree. Because there are significant differences in the design of the two marks, the finding of similarity is a less important factor in establishing a likelihood of confusion than it would be if the two marks had been identical in design or nearly indistinguishable to a casual observer.” This du Pont factor favors a finding of likelihood of confusion. The Goods and Services Turning to consider the goods and services involved in this case, we note that the question of likelihood of confusion must be determined based on an analysis of the goods or services recited in applicant’s application vis-à- vis the goods or services recited in the registration, rather than what the evidence shows the goods or services actually are. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d Serial No. 77724146 8 1715 (TTAB 1991). Further, it is a general rule that goods or services need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that goods or services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties’ goods or services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited therein; and Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002). The question of likelihood of confusion is determined based on the identification of goods in the applications vis-à-vis the services as set forth in the cited registration. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). Applicant argues that the examining attorney is applying a per se rule in finding the goods and services herein related. Applicant points out that various cases have held that the PTO must show “something more” than a mere possibility that the goods and/or services are related. Serial No. 77724146 9 We agree. See In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003)(small number of third-party registrations for both restaurant services and beer suggests the degree of overlap is de minimus)3; Jacobs v. International Multifoods Corporation, 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982)(relatedness between food and restaurant services requires “something more” than the fact that restaurants serve food); and In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209, 1211 (TTAB 1999)(record satisfied the “something more” evidentiary standard, and Board found Mexican foods and restaurant services are related). Therefore, we consider the “something more” made of record by the Examining Attorney. The examining attorney submitted copies of four third-party registrations. Three of the registrations are for online retail services for the sale of playground equipment, and one of the registrations was for inflatable toys and the manufacture thereof. The examining attorney also submitted excerpts from five websites for companies that sell and install permanent commercial and/or residential playgrounds. Each of these sites requires the purchaser to choose a playground design 3 Applicant contends that Coors requires a product to be a principal item sold in the retail store for relationship to exist between the product and retail services. We do not find this requirement in Coors or the other cases cited by applicant and we have not found this argument persuasive. Serial No. 77724146 10 and a permanent playground unit is relatively expensive, with one website showing a unit for approximately $14,000 on sale. A sixth website is a company that sells large inflatable toys that young children may play with and on. The examining attorney also submitted an excerpt from the Consumer Products Commission website about children’s products and lead paint; and an excerpt from another website showing a ranking system for, and manufacturers and suppliers of, playground equipment. An advertisement on this latter webpage encourages users to “download Baby and Children’s Products e-Magazine and discover new playground equipment and other baby and children’s products. … Detailed information of verified playground equipment suppliers.” The services in the cited registration are identified very broadly as “retail store services in the field of children’s products.” The examining attorney seems to contend that the record establishes that playground equipment is a “children’s product” that is sold at retail to consumers. However, “children’s products” is an extremely broad term that encompasses everything from furniture to clothing to software to toys. The most that we can conclude from this evidence is that permanently- installed playground equipment is large, requires complex planning and installation, and it is expensive; that permanent playground equipment is sold by companies that Serial No. 77724146 11 specialize in selling such equipment; and that it is sold to both general consumers for residential use and commercially to parks, schools and neighborhoods for public use. The very specialization apparently involved in selling such equipment, as established by the evidence, belies the examining attorney’s contention that such goods would be sold at registrant’s retail store featuring children’s products, despite the fact that playground equipment may fall under the very broad category of “children’s products.” Moreover, applicant has clarified in its identification of goods that its playground equipment is not sold through retail stores that sell children’s products. We find that the examining attorney has not demonstrated the “something more” necessary to establish a relationship between the respective goods and services and, thus, this du Pont factor favors applicant. Channels of Trade, Purchasers and Conditions of Sale Based on the respective identifications of goods and services we find that the channels of trade are different, i.e., applicant expressly excludes selling its equipment through retail stores for children’s products and the evidence indicates that playground equipment is sold through specialized companies. Applicant’s goods and registrant’s services are such that at least a portion of their relevant purchasers Serial No. 77724146 12 includes the general public. The evidence indicates that applicant’s goods are expensive and purchased with deliberation. In view of the breadth of the products covered by the registration, we presume the full range of knowledge and care is involved depending on the nature of the children’s product, its cost, and the knowledge of the consumer. We find that the du Pont factor pertaining to trade channels favors applicant, as does the care and expense involved in purchasing applicant’s products. However, the fact that both applicant’s and registrant’s relevant purchasers include the general public, which encompasses persons of all levels of sophistication, weighs against applicant. Conclusion When we consider the record and the relevant likelihood of confusion factors, and all of the examining attorney’s and applicant's arguments relating thereto, including those arguments not specifically addressed herein, we find that the differences in the goods and services and the relative expense and deliberation involved in purchasing applicant’s goods outweighs the similarities in the marks and any overlap in the relevant purchasers. We conclude that the examining attorney has not established that a likelihood of confusion exists. Serial No. 77724146 13 Decision: The refusal under Section 2(d) of the Act is reversed.