Marlene Moises Huber

Trademark Trial and Appeal BoardMar 19, 2020

87805406 (T.T.A.B. Mar. 19, 2020)

This Opinion is not a Precedent of the TTAB Mailed: March 19, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Marlene Moises Huber _____ Serial No. 87805406 _____ Cary J. Deaton of Cary J. Deaton, for Marlene Moises Huber. Amanda Galbo, Trademark Examining Attorney, Law Office 125, Heather Biddulph, Managing Attorney. _____ Before Cataldo, Mermelstein, and Dunn, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Marlene Moises Huber, seeks registration on the Principal Register of the mark displayed below, identifying “cookies” in International Class 30.1 1 Application Serial No. 87805406 was filed on February 21, 2018, based on Applicant’s assertion of December 31, 1995 as a date of first use of the mark in commerce under Section 1(a) of the Trademark Act. 15 U.S.C. § 1051(a). The application includes the following description of the mark and color statement: The mark consists of a flying snowman design. The snowman is wearing a hat, a bowtie, and gloves and is surrounded by floating stars. Two leaves appear above the snowman to form the snowman’s wings. The snowman is holding a candy cane in his right hand and a piece of paper in his left hand that features the wording ‘BINGLE’ above the wording ‘DELIGHTS’ as well as four stars. Serial No. 87805406 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the registered mark BINGLES, in typed characters2 identifying “bakery goods” in International Class 30.3 After the Trademark Examining Attorney made the refusal final, Applicant filed a request for reconsideration and appealed to this Board.4 We affirm the refusal to Color is not claimed as a feature of the mark. Page references to the application record are to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket system. 2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is the legal equivalent of a standard character mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known as ‘typed’ marks, but the preferred nomenclature was changed in 2003 to conform to the Madrid Protocol … we do not see anything in the 2003 amendments that substantively alters our interpretation of the scope of such marks”). 3 Registration No. 1181385 issued on the Principal Register on December 8, 1981. Section 8 and 15 affidavits accepted and acknowledged. Second Renewal. 4 Applicant’s brief does not conform to the requirements of Trademark Rule 2.126(b), 37 C.F.R. § 2.126(b), inasmuch as it is not double-spaced. Nonetheless, because Applicant’s brief clearly would fall within the applicable 25 page limit if double-spaced, we will exercise our Serial No. 87805406 - 3 - register. I. Likelihood of Confusion We base our determination of likelihood of confusion under Trademark Act 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 Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019). We have considered each DuPont factor that is relevant, and have treated other factors as neutral. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered.”)); 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.”). Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d discretion to consider it in our determination. See In re Univ. of Miami, 123 USPQ2d 1075, 1077 n.2 (TTAB 2017) (Board exercised its discretion to consider applicant’s appeal brief and reply that were not double-spaced because it appeared that they would fall within the applicable page limits had they been double-spaced). Applicant did not file a reply brief. Serial No. 87805406 - 4 - 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less weighty roles in any particular determination”). Two key considerations are the similarities between the marks and the relatedness of the goods. 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.”); In re FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018). A. The Goods and their Channels of Trade The second DuPont factor concerns the “similarity or dissimilarity and nature of the goods or services as described in an application or registration,” Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s goods are “cookies” and the goods in the cited registration are “bakery goods.” The Examining Attorney contends that “the registration uses broad wording to describe ‘bakery goods,’ which presumably encompasses all goods of the type described, including Applicant’s more narrowly identified ‘cookies.’”5 Applicant offers little argument in opposition.6 In support of her contention, the Examining Attorney 5 Examining Attorney’s Brief, 9 TTABVUE 11. 6 In her brief, Applicant states “Assuming the class 30 goods of both parties are related, the commercial impression of the two [marks] is sufficiently different to make Section 2(d) of the Lanum [sic] Act confusion unlikely.” Applicant’s brief, 7 TTABVUE 2. Serial No. 87805406 - 5 - introduced into the record the following dictionary definition of “cookie” – “a small cake made from stiff, sweet dough rolled and sliced or dropped by spoonfuls on a large, flat pan (cookie sheet) and baked.”7 In addition, we grant the Examining Attorney’s request to take judicial notice8 of the following entries from the Britannica Academic online encyclopedia discussing “baking:” Bakery products, which include bread, rolls, cookies, pies, pastries, and muffins, are usually prepared from flour or meal derived from some form of grain;9 and Recipes for cookies (called biscuits or sweet biscuits in some countries) are probably more variable than those for any other type of bakery product.10 We find that, based upon the dictionary and encyclopedia evidence of record, the “bakery goods” identified in the cited registration encompass the more narrowly identified “cookies” in the involved application. In other words, Applicant’s “cookies” are subsumed under the more generally identified “bakery goods” identified in the cited registration. See 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.’”). As a result, the goods in the involved application are presumed to be 7 Examining Attorney’s March 4, 2019 final Office Action at .pdf 7. Definition accessed from dictionary.com. 8 The Board may take judicial notice of information from encyclopedias. Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 n.6 (TTAB 2011); In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013). We note that the better practice would have been to introduce this evidence during prosecution of the involved application and prior to briefing. 9 Examining Attorney’s Brief, 9 TTABVUE 15. 10 Attachment to Examining Attorney’s Brief, 10 TTABVUE 4. Serial No. 87805406 - 6 - included among the goods in the cited registration and are legally identical to that extent. The third DuPont factor concerns “[t]he similarity or dissimilarity of established, likely-to-continue trade channels.” Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1161 (quoting DuPont, 177 USPQ at 567). Inasmuch as the goods identified in the application and the cited registration are legally identical, we must presume that the channels of trade and classes of purchasers for these goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). See also Octocom Sys., Inc., 16 USPQ2d at 1787 (“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 the sales of goods are directed.”). We find that the legal identity of the goods, and their presumed overlapping channels of trade and consumers weigh heavily in favor of likelihood of confusion. Serial No. 87805406 - 7 - B. The Marks Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant’s mark and the mark in the cited registration in their entireties, taking into account their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567; Stone Lion Capital v. Lion Capital, 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”). “The proper test is not a side-by-side comparison of the marks, but instead 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. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation marks omitted). See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Consumers may not necessarily encounter the marks in close proximity and must rely upon their recollections over time. In re Mucky Duck Mustard, 6 USPQ2d 1467, 1468 (TTAB 1988), aff’d mem., 864 F.2d 149 (Fed. Cir. 1988). Serial No. 87805406 - 8 - Applicant’s mark substantially adopts the wording of the typed or standard character mark BINGLES in the cited registration in its entirety, deleting the final “s” and adding the term DELIGHTS. “Marks have frequently been found to be similar where one mark incorporates the entirety of another mark, as is the case here.” Coca-Cola Bottling Co. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL is similar to BENGAL LANCER); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY is similar to EBONY DRUM); In re S. Bend Toy Mfg. Co., 218 USPQ 479, 480 (TTAB 1983) (LIL’ LADY BUG is similar to LITTLE LADY); see also TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB 2019). As between BINGLE and BINGLES, we see little viable distinction. If the registered mark is perceived to be a plural form of BINGLE in the applied-for mark, the distinction is not sufficient to prevent likely confusion. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (“it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar.”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (the singular and plural forms of SHAPE are essentially the same mark) (citing Serial No. 87805406 - 9 - Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (CCPA 1957) (no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark). If the BINGLES mark is perceived as a possessive form of the term BINGLE in the applied-for mark, that too is not a sufficient distinction. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986). Furthermore, there is no evidence of record that BINGLE[S] possesses any meaning in relation to the goods at issue. Thus, the term appears to be arbitrary as applied to the respective goods. As a result, the registered mark BINGLES and the term BINGLE in the applied-for mark are essentially identical in appearance and sound. Applicant’s mark also includes the term DELIGHTS which, while suggesting a quality of Applicant’s cookies, does not directly describe her goods. We nonetheless find this term to be somewhat less distinctive than the arbitrary preceding term BINGLE. Moreover, the significance of the term BINGLE in Applicant’s mark is reinforced inasmuch as it is the first word in the mark. Presto Products Inc. v. Nice- Pak Products, Inc., 9 USPQ2d 1895, 1897) TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed in the mind of a purchaser and remembered”); see also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692 (“The presence of this strong distinctive term as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of ROYALE.”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 Serial No. 87805406 - 10 - USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers must first notice the identical lead word). Applicant’s mark also includes the design of a winged, flying snowman carrying a candy cane in one hand and a sheet of paper containing the wording BINGLE DELIGHTS in the other. The flying snowman design is prominently sized and also appears to be distinctive as applied to Applicant’s goods. However, it is settled that where, as here, a mark is comprised of both words and a design, the words are normally accorded greater weight, in part because consumers are likely to remember and use the words to request the goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (“if one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services” and “because applicant’s mark shares with registrant’s mark that element responsible for creating its overall commercial impression, the marks are confusingly similar”). There is nothing in the record to suggest that consumers will utilize the design Serial No. 87805406 - 11 - portion of Applicant’s mark to request her goods rather than the more conventional wording. Purchasers may reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression between the wordings “BINGLE” and “BINGLES” set forth in the respective marks, that Applicant’s goods offered under the “BINGLE DELIGHTS” and design mark constitute a new or additional product line from the same source as the goods offered under the registered “BINGLES” mark with which they are acquainted or familiar, and that Applicant’s mark is merely a variation of the registered mark that nonetheless points to the same source. Upon evaluating Applicant’s mark and the registered mark BINGLES, we find they are more similar than dissimilar “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). This is particularly the case because “[w]hen marks would appear on virtually identical ... [goods or] services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). See also ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980). This DuPont factor weighs in favor of a finding of likelihood of confusion. C. Actual Confusion Serial No. 87805406 - 12 - Under the seventh and eighth DuPont factors, we consider the nature and extent of any actual confusion, in light of the length of time and conditions under which there has been contemporaneous use of Applicant’s and Registrant’s subject marks. DuPont, 177 USPQ at 567. Applicant argues that there is no evidence of actual confusion despite contemporaneous use of the marks since December 1995. We do not accord significant weight to Applicant’s contention, unsupported by any evidence, that there have been no instances of actual confusion despite contemporaneous use of the respective marks. The Federal Circuit has addressed the question of the weight to be given to an assertion of no actual confusion by an applicant in an ex parte proceeding: With regard to the seventh DuPont factor, we agree with the Board that Majestic’s uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that self- serving testimony of appellant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, [citation omitted], especially in an ex parte context. Majestic Distilling, 65 USPQ2d at 1205. Accordingly, while examples of actual confusion may point toward a finding of a likelihood of confusion, an absence of such evidence is not as compelling in support of a finding of no likelihood of confusion. Thus, we cannot conclude from the lack of instances of actual confusion that confusion is not likely to occur. Serial No. 87805406 - 13 - In addition, the standard is likelihood of confusion, not actual confusion. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018). “[U]ncorroborated statements of no known instances of actual confusion are of little evidentiary value.” In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1163 (Fed. Cir. 2019) (quoting Majestic Distilling, 65 USPQ2d at 1205). This especially holds true in an ex parte context, where there is no chance for a registrant to show what opportunity for confusion there has been based on registrant’s use and advertising of its mark. See In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204-05 (TTAB 2009). Applicant’s assertion of lack of actual confusion thus carries little, if any, probative value. The seventh and eighth DuPont factors are neutral. D. Conclusion When we consider the record and the relevant likelihood of confusion factors, and all of Applicant’s arguments relating thereto, including those arguments not specifically addressed herein, we conclude that consumers familiar with the goods offered under the mark in the cited registration would be likely to believe, upon encountering the legally identical goods under Applicant’s mark, that the goods originated with or are associated with or sponsored by the same entity. Decision: The refusal to register Applicant’s mark is affirmed under Section 2(d) of the Trademark Act.