Light for Life Foundation International

Trademark Trial and Appeal BoardMay 9, 2014

No. 85506765 (T.T.A.B. May. 9, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: May 9, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Light for Life Foundation International _____ Serial No. 85506765 _____ Brian D. Brown of Faegre Baker Daniels LLP for Light for Life Foundation International. Kim Teresa Moninghoff, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _____ Before Taylor, Bergsman and Gorowitz, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Light for Life Foundation International (“applicant”) filed a use-based application for the mark YELLOW RIBBON SUICIDE PREVENTION PROGRAM, in standard character form, for “education services, namely, providing live and on- line seminars, lectures, classes and workshops in the field of suicide prevention, suicide awareness intervention and prevention training for youth and adults,” in Class 41. Applicant disclaimed the exclusive right to use “Suicide Prevention Program.” Applicant is the owner of Registration No. 4287836 for the mark YRSPP and a design comprising a yellow ribbon, shown below for the same services as the Serial N applicat design o T under S that ap REINTE awarene the U.S 35.2 Re 1 Registr Office Ac Applican SUICIDE seminars Novembe maintain value oth presump 1472, 14 870 F.2d provide c 963 (TTA question 2 Registr o. 855067 ion in thi f a ribbon. he Tradem ection 2(d) plicant’s GRATION ss of the . military a gistrant di ation No. tion, Ex. E t claimed o PREVEN in the fiel r 17, 2007 ed, our pr er than to tions of Se 80 (TTAB 2 1563, 10 U onstructive B 1979) ( of registrab ation No. 4 65 s appeal.1 ark Exam of the Tra mark so PROGRA resources, nd their f sclaimed t 4287836, is ). wnership o TION PR d of suicid . While it ecedent is show that ction 7(b) o 007). See SPQ2d 13 notice of a cancellation ility ‘a new 189701, issu Applican ining At demark A resembles M, in sta benefits a amilies be he exclusiv sued Febru f Registrati OGRAM f e preventio is unfortu clear; a ca it once iss f the Trade also In Ac 07, 1309 (F nything.”); “destroys ball game’ ed August 2 t disclaim torney ref ct of 1946, the regi ndard cha nd suppor fore, durin e right to ary 12, 20 on No. 242 or “trainin n.” Howev nate that a ncelled or e ued and it mark Act. tion Tempo ed. Cir. 19 re Hunter the Section which mus 14, 2012. ed the ex used to re 15 U.S.C. stered ma racter for t services g and afte use “Reint 13. (Nove 8623 for th g and ed er, that reg pplicant’s xpired reg is not entit In Re Gin rary Servic 89) (“a canc Publishing [7(b)] pre t be predica clusive rig gister ap § 1052(d), rk YELL m, for “pro available r deploym egration P mber 1, 20 e mark YEL ucational istration w prior regis istration h led to any c UK Limi es Inc. v. L elled regis Company, sumptions ted on curr ht to use plicant’s m on the gro OW RIBB moting pu to membe ents,” in C rogram.” 13 respon LOW RIB workshops as cancelle tration was as no prob of the statu ted, 90 USP abor Force tration doe 204 USPQ and makes ent though the ark und ON blic rs of lass se to BON and d on not ative tory Q2d Inc., s not 957, the t.”). Serial No. 85506765 3 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). 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”). These factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. A. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression and the number and nature of similar marks in use in connection with similar services. We turn first to the du Pont likelihood of confusion 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 1987). In comparing the marks, we are mindful that “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in Serial No. 85506765 4 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). See also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The marks at issue are YELLOW RIBBON SUICIDE PREVENTION PROGRAM and YELLOW RIBBON REINTEGRATION PROGRAM. The marks are similar because their first two words, “Yellow Ribbon,” are identical. However, because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, the analysis cannot be predicated on focusing solely on the term “Yellow Ribbon”; that is, the decision must be based on the entire marks, not just part of the marks. See Stone Lion Capital Partners, LP v. Lion Capital LLP, __ F.3d ___, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion”). On the other hand, 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 Nat’l Data Corp., 224 Serial No. 85506765 5 USPQ at 751. We focus on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012). In analyzing the marks, the term “Yellow Ribbon” is the dominant part of both marks because the terms “Suicide Prevention Program” in applicant’s mark and “Reintegration Program” in the registered mark are descriptive and have been disclaimed. It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re Nat’l Data Corp., 224 USPQ at 752 (“Regarding descriptive terms, this court has noted that the descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). The significance of the term “Yellow Ribbon” as the dominant element of both marks is further reinforced by its location as the first part of the marks. See Presto Products Inc. v. Nice-Pak Products, 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”). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because Serial No. 85506765 6 “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word). Applicant argues, in essence, that a yellow ribbon is descriptive for charitable services and, therefore, the mark in the cited registration is entitled to only a narrow scope of protection or exclusivity of use. Under this du Pont factor, we consider evidence pertaining to the number and nature of similar marks in use on similar goods. “The purpose of a defendant introducing third party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1694. See also Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991). To support this argument, applicant referenced third-party registrations for marks containing the wording PINK RIBBON arguing by analogy that the wording YELLOW RIBBON in the marks at issue is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.3 Oddly, the Trademark Examining Attorney, not applicant, submitted seven registrations comprising yellow ribbons for charitable services and one registration comprising a yellow 3 April 24, 2013 response to Office action. Serial N ribbon Registra design, for “cha Registra applican disclaim W register the mar third-pa that the familiar USPQ 4 reposing 4 Novem 5 Registe o. 855067 for educa tion No. 4 shown belo ritable fu nt disclai t’s registr ed the exc hile the ed by othe ket impact rty registr marks a with them 62, 463 (C in the U. ber 5, 2013 red Novem 65 tional se 237309 is w, ndraising med the e ation for a lusive righ third-part rs, the reg any of the ations hav re in use . See Sm CPA 197 S. Patent a Office actio ber 6, 2011 rvices.4 for the ma in the n xclusive r yellow ri t to use th y registra istrations marks m e little pr on a comm ith Bros. M 3) (the pur nd Tradem n. . 7 One inclu rk YELLO ature of ight to us bbon desig e yellow ri tions pro are not ev ay have m obative va ercial sca fg. Co. v. chasing p ark Offic des the W RIBBO an annu e the wor n noted a bbon. ve that idence of ade. Abse lue becau le or tha Stone Mfg ublic is no e); Produc term “Ye N OF LO al gala,” d “Gala.” bove, altho such mar the extent nt evidenc se they ar t the publ . Co., 476 t aware o tos Lacteos llow Ribb VE GALA in Class We also ugh appli ks have b of any us e of actual e not evid ic has bec F.2d 1004, f registrat Tocumbo on”: and 36.5 note cant een e or use, ence ome 177 ions S.A. Serial No. 85506765 8 de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983). [I]t would be sheer speculation to draw any inferences about which, if any, of the marks subject of the third party (sic) registrations are still in use. Because of this doubt, third party (sic) registration evidence proves nothing about the impact of the third-party marks on purchasers in terms of dilution of the mark in question or conditioning of the purchasers as to their weakness in distinguishing source. In re Hub Distributing, Inc., 218 USPQ at 286. See also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a mark, however, registration evidence may not be given any weight”). Nevertheless, third-party registrations may be used in the manner of a dictionary to show that mark or a portion of a mark is descriptive or suggestive of goods and services. In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1270 (TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“[T]hird-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry”); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“[T]hird party registrations are of use only if they tend to demonstrate that a mark or a portion thereof is suggestive or descriptive of certain goods and hence is entitled to a narrow scope of protection”). Based on these registrations, applicant is asking us to infer that the design of a yellow ribbon has suggestive significance in the field of charitable services (e.g., support for U.S. troops deployed overseas). Since a design is equivalent to the word, we should also infer that the term “Yellow Ribbon” has suggestive significance in Serial No. 85506765 9 the field. See Izod, Ltd. v. Zip Hosiery Co., 405 F.2d 575, 160 USPQ 202, 203 (CCPA 1969) (pictorial representation of a feline animal is similar to the literal designation TIGER HEAD); In re Rolf Nilsson AB, 230 USPQ 141, 142 (TTAB 1986) (“a picture and the word that describes that picture are given the same significance in determining likelihood of confusion.”). However, in our consideration of the third-party registrations, we note that applicant’s mark is closer to the cited registration than any of the third-party registrations that have been made of record. Even assuming that the term “Yellow Ribbon” is suggestive and is entitled to only a narrow scope of protection or exclusivity of use, it is entitled to the presumptions granted a registration on the Principal Register under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b) (i.e., prima facie evidence of the validity of the registered mark, opposer’s ownership of the mark, and opposer’s exclusive right to use the mark in commerce on or in connection with the services specified in the certificate of registration). As has often been stated, likelihood of confusion is to be avoided as much between “weak” marks as between “strong” marks, and as between “weak” and “strong” marks. See King Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA, 1974); In re Industrial Expositions, Inc., 194 USPQ 456, 459 (TTAB 1977). Consumer’s familiar with the registrant’s mark YELLOW RIBBON REINTEGRATION PROGRAM may view applicant’s mark YELLOW RIBBON SUICIDE PREVENTION PROGRAM as a new service rendered under the YELLOW RIBBON line of services. In view thereof, we find that applicant’s mark Serial No. 85506765 10 YELLOW RIBBON SUICIDE PREVENTION PROGRAM is similar to YELLOW RIBBON REINTEGRATION PROGRAM in terms of appearance, sound, connotation and commercial impression. B. The similarity or dissimilarity and nature of the services. The recitation of services in the cited registration reads as follows: Promoting public awareness of the resources, benefits and support services available to members of the U.S. military and their families before, during and after deployments. Applicant’s recitation of services reads as follows: Education services, namely, providing live and on-line seminars, lectures, classes and workshops in the field of suicide prevention, suicide awareness intervention and prevention training for youth and adults. It is not necessary that these services be identical or even competitive to support a finding of likelihood of confusion. Rather, it is sufficient that the services are related in some manner, or that the circumstances surrounding their marketing are such, that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources of the services. See In re Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Melville Corp., 18 USPQ2d 1386, 1387 (TTAB 1991). Registrant is rendering support services for National Guard and Reserve Service members and their families with respect to deployment cycle information, resources, programs, services and referrals.6 Because registrant’s support services 6 Registrant’s website (yellowribbon.mil) attached to the November 15, 2013 Office action. Serial No. 85506765 11 are so broadly defined, suicide prevention is one of the areas where registrant may offer support. Indeed, the record confirms that registrant offers “suicide prevention and community healing opportunities via monthly meetings.”7 Program Highlights: ● Analyzed suicide data from the Services to provide trend analysis and insight to DoD senior leadership. ● Coordinated with the Defense Centers of Excellence for Psychological Health and Traumatic Brain Injury to review existing suicide assessment tools in order to identify effective clinical and non- clinical tools for use within the RC. ● Published the Suicide Prevention and Resilience Resource inventory, which gathers information on programs and services delivered by Federal, state, and local organizations, measures the satisfaction rates, and identifies relevant gaps. ● Created the “RC Suicide Prevention Plan: A Toolkit for Commanders,” published in May 2012 and distributed to National Guard and Reserve units worldwide. ● Delivered a postvention plans workshop leading up to the annual DoD/VA Suicide Prevention Conference. ● Distributed approximately 50,000 gunlocks to YRRP event attendees.8 While we must analyze the similarity or dissimilarity and nature of the goods based on the recitation of services set forth in the application and the registration at issue, we may use extrinsic evidence to determine what is encompassed by the 7 Id. 8 Id. Serial No. 85506765 12 recitation of services so long as we do not improperly restrict or expand the services at issue. See In re Thor Tech Inc., 90 USPQ2d 1634, 1638 n.10 (TTAB 2009); In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990) (“when the description of goods for a cited registration is somewhat unclear, … it is improper to simply consider that description in a vacuum and attach all possible interpretations to it when the applicant has presented extrinsic evidence showing that the description of goods has a specific meaning to members of the trade.”). Because both services involve informing and educating others about suicide prevention, we find that the services are related. C. Established, likely-to-continue channels of trade and classes of consumers. Applicant renders its educational suicide prevention services to “youth and adults.” Registrant renders its public awareness services, including suicide prevention, “to members of the U.S. military and their families.” Thus, registrant’s services include youth in military families and adult military members and their families. Applicant argues that its services “are directed towards teens in school not those serving in the military or employed by the Department of Defense.”9 However, as indicated above, we are bound by the recitation of services in the application and we may not read any restrictions or limitations into it. Because the scope of the registration applicant seeks is defined by its application (and not by its 9 Applicant’s Brief, p. 5. Serial No. 85506765 13 actual use) it is the application (and not actual use) that we must look to in determining applicant’s right to register: The 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 Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (where there is no specific limitation in the description of goods and nothing inherent in the nature of the mark that restricts registrant’s usage of its mark, the Board many not read limitations into the registration). Moreover, with respect to applicant’s services, applicant’s website describes applicant’s services, specifically its “Restore Hope Campaign,” “[a] national tour with the hallmark of the Yellow Ribbon Suicide Prevention Program, a 1968 Yellow Mustang to bring street teams to local area events …” that “can help youth/teens, adults, military (active and retired) service members and their families and our elders.”10 Thus, applicant’s self-described services are encountered by military or former military families. As a practical matter, the only scenario in which the classes of consumers would be the same involves members of the military and their families or former 10 Yellowribbon.org attached to the November 15, 2013 Office action. Serial No. 85506765 14 military members and their families. A nonmilitary civilian would have no reason to encounter registrant’s services. However, the services at issue are not so different that there could be no confusion among this limited group. Thus, military or former military personnel and their families who come into contact with applicant’s YELLOW RIBBON SUICIDE PREVENTION PROGRAM may mistakenly believe that applicant’s services are associated with registrant’s YELLOW RIBBON REINTEGRATION PROGRAM services with which they are familiar, especially because applicant seeks to help active and retired service members among others. In view of the foregoing, we find that the established, likely-to-continue channels of trade and classes of consumers overlap. D. Balancing the factors. Because the marks are similar, the services are related, and the services move in overlapping channels of trade and are rendered to overlapping classes of consumers, we find that applicant’s mark YELLOW RIBBON SUICIDE PREVENTION PROGRAM for “education services, namely, providing live and on- line seminars, lectures, classes and workshops in the field of suicide prevention, suicide awareness intervention and prevention training for youth and adults” is likely to cause confusion with YELLOW RIBBON REINTEGRATION PROGRAM for “promoting public awareness of the resources, benefits and support services available to members of the U.S. military and their families before, during and after deployments.” Serial No. 85506765 15 Decision: The refusal to register is affirmed.