Marko Schuhfabrik GmbH

Trademark Trial and Appeal BoardDec 23, 2009

No. 79040612 (T.T.A.B. Dec. 23, 2009)

Mailed: December 23, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Marko Schuhfabrik GmbH ________ Serial No. 79040612 ______ Ellen A. Rubel of Moore & Van Allen, PLLC for Marko Schuhfabrik GmbH. Shaila E. Settles, Trademark Examining Attorney, Law Office 114 (Margaret Le, Managing Attorney). _______ Before Drost, Kuhlke and Walsh, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Marko Schuhfabrik GmbH seeks registration on the Principal Register of the mark THINK, in standard character form, for goods identified as “backpacks” in International Class 18 and “footwear” in International Class 25.1 Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when used with its identified goods, so 1 Application Serial No. 79040612, filed December 13, 2006, under Trademark Act Section 66(a), 15 U.S.C. §1141. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 79040612 2 resembles the registered mark for “sweatshirts, t-shirts, caps” in International Class 25, as to be likely to cause confusion, mistake or deception.2 Applicant has appealed the final refusal and the appeal is fully briefed. We reverse the refusal to register. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are 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 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). 2 Registration No. 2694398, issued March 11, 2003, Section 8 and 15 declaration accepted and acknowledged. In the Combined Declaration of Use and Incontestability under Sections 8 and 15, registrant deleted the following goods from the original identification: men’s, women’s, junior’s, children’s and infant’s clothing, namely, jeans, pants, shorts, overalls, shortalls, khaki pants, polo shirts, jackets, wind resistant jackets, coats, anoraks, sweat pants, fleece tops and pants, jogging suits, blouses, shirts, vests, gloves, hats, socks, belts, shoes, boots, infant wear, knit caps, gloves and mittens. Serial No. 79040612 3 In determining the similarity between the marks we analyze “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 du Pont, 177 USPQ at 567. Applicant’s proposed mark THINK is identical in sound and connotation to registrant’s mark . Applicant argues that registrant’s mark is: ...specifically limited to a particular stylized presentation of the term THINK [and a] special form drawing is required where the word(s) sought to be protected is in ‘a distinctive format that changes the meaning or overall commercial impression of the mark’ ... [t]herefore to ignore the import of that stylization, the impact it may have had on the registrability of the mark in the first place, and/or the limited scope of the resulting registration would be to view the registration as having broader effect than it does. Br. p. 3. We are not persuaded by this argument. The differences in appearance and overall commercial impression occasioned by the stylization in registrant’s mark does not outweigh the identity in sound and connotation inasmuch as applicant is applying for its mark in standard characters. As such, we must consider in our analysis all reasonable depictions, including those that are similar in appearance Serial No. 79040612 4 and commercial impression to registrant’s display. In re RSI Systems, LLC, 88 USPQ2d 1445 (TTAB 2008); In re Pollio Dairy Products Corp, 8 USPQ2d 2012 (TTAB 1988). In view thereof, we find the marks to be similar. Applicant relies on several third-party registrations to support its argument that the registered mark should be restricted to a narrow scope of protection. Specifically, applicant argues that: ...the marketplace and register is crowded with THINK marks...there are, at least, forty-two (42) active registrations in Class 25 for marks dominated by the term THINK (or a substantially similar variation thereof, i.e., THINKING). While the co-existence of these registrations may not, in [sic] of itself, prove that the instant THINK mark is also entitled to registration, this evidence does show that the cited registration should be considered weak and entitled to only a narrow scope of protection... Moreover, this multitude of THINK formative marks in a single industry demonstrates that the purchasing public has repeatedly been exposed to the term THINK as a mark for goods in Class 25 and, as such, has already become accustomed to and learned to distinguish among THINK marks in this industry. Br. p. 4. Third-party registrations are not evidence of use in the marketplace and as such are not probative of the sixth du Pont factor, “the number and nature of similar marks in use on similar goods.” AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269-70 (CCPA 1973). However, “they may be considered to demonstrate the Serial No. 79040612 5 meaning of a word which comprises the mark, or a portion thereof, to show that there is a well-known and commonly understood meaning of that word and that the mark has been chosen to convey that meaning. The conclusion to be drawn in such a case is that there is an inherent weakness in a mark comprised in whole or in part of the word in question and that, therefore, the question of likelihood of confusion is colored by that weakness to the extent that only slight differences in the marks may be sufficient to distinguish one from the other.” In re Melville Corp., 18 USPQ 1386, 1388 (TTAB 1991) citations omitted. See also Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) (addition of house mark to applicant’s mark NORTON MCNAUGHTON ESSENTIALS sufficient to distinguish it from opposer’s mark ESSENTIALS because common element highly suggestive). The registrations here certainly show that many entities have registered the word THINK in various forms and with various other additional matter (wording, stylization or designs) as a mark for the goods involved here, footwear and clothing, such that THINK has some significance in the field and potential consumers may indeed use other elements to distinguish the marks. See, e.g., Reg. No. 3073118 for the mark THINK FAST! for shirts, Serial No. 79040612 6 t-shirts, sweatshirts, polo shirts, shorts, jackets, caps, visors and socks; Reg. No. 3341323 for the mark THINK HER! for shirts, hats, shorts, active sportswear, namely, tank tops, jeans and socks; footwear and headwear; Reg. No. 2890280 for the mark THINK BLUE for suits, skirts, shirts, pants, jackets, coats, footwear, hats, caps; Reg. No. 3412627 for the mark THINKMAN for shirts, jackets, sweatshirts, hats, outerwear, footwear; Reg. No. 2643269 for the mark THINK BIG for t-shirts, sweatshirts, hats, caps, pants, shorts; Reg. No. 2608578 for the mark THINK BLACK for shirts, hats, jackets, sweatshirts, shoes; and Reg. No. 1615483 for the mark THINK PINK for trousers, jackets, pullovers, jerseys, boots and shoes. Therefore, we find the scope of protection for the mark in the cited registration to be somewhat narrowed in the fields of clothing items and footwear. While this finding does not affect the factor of the similarity of the marks in view of applicant’s standard character drawing which is devoid of any distinguishing element, it does impact the factor of the relatedness of the goods. Where the scope of protection is narrowed, we need evidence that the goods are more closely related for a determination of likelihood of confusion. Serial No. 79040612 7 We turn next to a consideration of the goods, channels of trade and classes of purchasers as identified in the application and the cited registration. It is well settled that goods need not be similar or competitive in nature to support a finding of likelihood of confusion. The question is not whether purchasers can differentiate the goods themselves, but rather whether purchasers are likely to confuse the source of the goods. See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Further, we must consider the cited registrant’s goods and applicant’s goods as they are described in the registration and application and we cannot read limitations into those goods. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the identifications in the application or cited registration describe goods broadly, and there is no limitation as to the nature, type, channels of trade or class of purchasers, it is presumed that the registration or application encompasses all goods of the type described, that they move in all channels of trade normal for these goods, and that they are available to all classes of purchasers for the Serial No. 79040612 8 described goods. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). As a preliminary matter, inasmuch as registrant has deleted from its registration several items, including shoes and boots, we confine our analysis to the remaining goods in the cited registration and the evidence and argument presented by the examining attorney and applicant as to those goods. Applicant’s goods are “backpacks” and “footwear.” Registrant’s goods are “sweatshirts,” “t-shirts” and “caps.” In support of her position that the respective goods are related, the examining attorney submitted excerpts from the websites of four large retailers showing applicant’s and registrant’s types of goods marketed under a common house mark. See, e.g., www.llbean.com (backpacks, footwear, caps, tents, pants, sweaters); www.landsend.com (backpacks, footwear, lunchboxes, t-shirts); www.thenorthface.com (backpacks, t-shirts); and www.eddiebauer.com (backpacks, footwear, jackets and blazers). While the examining attorney’s evidence depicts footwear and backpacks on the same website, though not always the same page, as t-shirts or caps, these examples Serial No. 79040612 9 are for the most part retailers specializing in camping gear and outerwear. We note that the website evidence also shows tents for sale along with clothing, but it does not necessarily follow that tents are related to clothing. Third-party registrations in the nature of house marks used for a wide variety of items are of little value by themselves to show that the various goods for which they are registered are all related. Similarly, here where the website evidence shows house marks used on a wide variety of goods, it is not so probative of this factor. As noted by applicant, there is no per se rule that various types of wearing apparel are related. In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). In some cases where the Board determined a likelihood of confusion existed, the cited registration contained a broader array of clothing items. For example, in Melville the application was for women’s shoes and the cited registration included women’s pants, blouses, shorts and jackets prompting the Board to note that “[a] woman’s ensemble, which may consist of a coordinated set of pants, a blouse and a jacket, is incomplete without a pair of shoes which match or contrast therewith.” Melville, 18 USPQ2d at 1388. Here, the evidence does not show that that t-shirts, sweatshirts and caps have the same Serial No. 79040612 10 complementary relationship to footwear as complete ensembles. We must base our decision on the evidence in the record and in this case, we have little evidence to show that the clothing items here are related. Given the limited probative value of the house mark evidence and the narrow scope of protection for registrant’s mark in this field, we find that, although there is some overlap in the channels of trade and classes of purchasers, applicant’s footwear is not sufficiently related to registrant’s t- shirts, sweatshirts and caps. With respect to the backpacks, applicant argues that: While the Examining Attorney asserts that the mark is as equally unregistrable for the Class 18 goods, backpacks, as it is for the Class 25 goods, footwear, to base such a determination on the fact that there are various large retailers who sell all of the items is to ignore some very basic marketplace realities. In this day and age, many large retailers sell an enormous breadth of goods from a single location or from a single website. It is common now to be able to buy electronics, luggage, clothing, toys, household accessories and food from a single store. This reality can not then be interpreted to indicate that food and clothes or toys and luggage are per se related goods. More specific to this case, while some large retailers do sell backpacks and clothing, this does not negate the fact that back packs and clothing are distinctly different products often sold in entirely different types of stores, and when they are sold by the same retailer, even under the identical mark, the goods are sold within different Serial No. 79040612 11 departments as parts of distinct purchasing decisions. Br. p. 5. Backpacks are even further from registrant’s goods than footwear. They are a very different type of good and we have little, if any, evidence that they are associated with clothing items or complementary to clothing items other than house marks for a wide variety of goods. In view of the above, again although there is some overlap in the channels of trade and classes of purchasers, we find the backpacks to be unrelated based on the disparate nature of these goods. In conclusion, we find on this record that because of the inherent differences in the goods and the somewhat narrowed scope of protection for registrant’s mark, confusion is not likely. The examining attorney has failed to establish that the goods are related such that their contemporaneous use on the respective goods involved in this case is likely to cause confusion as to the source or sponsorship of such goods and the scope of protection to be accorded the mark in the cited registration is not so broad as to encompass such goods. Decision: The refusal to register under Section 2(d) of the Trademark Act is reversed.