MingShih Chao

Trademark Trial and Appeal BoardMay 27, 2016

No. 86561007 (T.T.A.B. May. 27, 2016)

This Opinion is not a Precedent of the TTAB Mailed: May 27, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re MingShih Chao _____ Serial No. 86561007 _____ Matthew H. Swyers of The Trademark Company, for MingShih Chao. Amer Raja, Trademark Examining Attorney, Law Office 121, Michael W. Baird, Managing Attorney. _____ Before Cataldo, Ritchie and Goodman, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: MingShih Chao (“Applicant”) seeks registration on the Principal Register of the mark APXX (in standard characters) for “Microphones” in International Class 9.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that Applicant’s mark, when used in connection with the identified goods, is likely to cause confusion with the mark APX (in standard characters) for “two-way radios; radio accessories, 1 Application Serial No. 86561007 was filed on March 11, 2015, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as February 15, 2015. Serial No. 86561007 - 2 - namely, batteries, microphones, ear buds, headsets, power chargers, power adaptors, routers and connectors.”2 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. I. Evidentiary Issue Applicant has requested in its brief that “the Board take judicial notice of the results for APX [and APXX]” “as provided by AcronymFinder.com.”3 Applicant did not provide with its brief a copy of the putative results of its search of AcronymFinder.com. The Examining Attorney has objected to this request for judicial notice, arguing, among other things, that this information was not made of record prior to appeal and Applicant failed to show that “Acronym Finder is considered to be an online dictionary that exists in printed format or has regular fixed editions.”4 The Board will take judicial notice of dictionary listings when submitted during appeal and will readily accept the electronic equivalent of a printed publication which is readily verifiable and reliable. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). In this case, however, it is unclear whether Acronym Finder is a dictionary and exists in printed form such that it is readily verifiable and reliable. In addition 2 Registration No. 3803732 issued June 15, 2010; Section 8 & 15, accepted and acknowledged. 3 4 TTABVUE 7. The citations to “TTABVUE” throughout the decision are to the Board’s public online database that contains the proceeding file, available on the USPTO website, www.USPTO.gov. The first number represents the prosecution history number listed in the electronic case file and the second represents the page number(s). 4 6 TTABVUE 4-5. Serial No. 86561007 - 3 - and as noted above, Applicant did not provide a copy of the search results. Therefore, we decline to take judicial notice thereof. See In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). II. Applicable Law 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 likelihood of confusion. 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, 1204 (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). These factors, along with other relevant du Pont factors, are discussed below. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (“we need to consider only the [du Pont] factors that are relevant and of record”). To the extent that any other du Pont factors for which no evidence or argument was presented may nonetheless be applicable, we treat them as neutral. III. Discussion A. Relatedness of the Goods and Channels of Trade We first consider the second and third du Pont factors, the similarity of the goods and channels of trade. With regard to the similarity of the goods, we must make our determination based on the goods as they are identified in the cited registration and application. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Serial No. 86561007 - 4 - Cir. 1997); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). In this case, Applicant’s goods are broadly identified as microphones, while the goods identified in the cited registration include a specific type of microphone, namely one used as a radio accessory. The more broadly worded “microphones” in Applicant’s identification of goods encompass the specific type of microphone identified in the cited registration. In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (broadly identified goods in application that are unrestricted as to channels of trade and unlimited as to classes of purchasers are presumed to encompass all of the goods described). Thus, Applicant’s and Registrant’s goods are in part legally identical. Furthermore, in its brief Applicant concedes the similarity of the goods.5 Because the goods identified in the application and the cited registration are in part legally identical, we must presume that the channels of trade and classes of purchasers for such goods are the same.6 In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550-51 (TTAB 2012) (citations omitted). Additionally, there is nothing in the identification of goods in either the cited registration or the application that limits either Registrant's or Applicant's channels of trade. Therefore, we must presume that both Applicant’s and Registrant’s goods travel in all usual channels of trade and are offered to all normal potential purchasers. Coach Servs. Inc. v. Triumph Learning 5 4 TTABVUE 10. 6 Applicant has not specifically addressed this factor on appeal except to indicate he does not concede this point. 4 TTABVUE 10. Serial No. 86561007 - 5 - LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012) (citing Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351 (Fed. Cir. 2000)). B. Similarity of the Marks We now turn to the first du Pont factor focusing on “the similarity or dissimilarity of 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). “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, 101 USPQ2d at 1721. The focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In comparing the marks, we note that, “[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, 1700 (Fed. Cir. 1992). The marks in this case, APX and APXX, are similar in appearance, sharing the same first three letters A-P-X in the same order, and differing only by a single letter at the end of Applicant’s mark, an additional letter “X.” Due to its position, the additional letter “X” in Applicant’s mark does not appear to create a significant Serial No. 86561007 - 6 - difference in the appearance or the pronunciation of the marks; the marks appear to be highly similar in sound, either pronounced as a two-syllable word or as the separate letters, and the marks are nearly identical in appearance. Further, because both marks consist of the three identical letters in the same sequence, they convey very similar commercial impressions. As to the connotation of the marks, Applicant argues that Registrant’s mark, APX, is a well-known acronym, Alt Preset Extreme.7 However, we have declined to take judicial notice of APX as an acronym. Based on this record, we find it likely that consumers would consider both marks to be arbitrary terms as applied to the goods and thus consumers would perceive similar commercial impressions from their similar letters. Although Applicant argues that the additional letter “X” at the end of its mark distinguishes its mark from the cited mark, we find the additional letter “X” in Applicant’s mark to be insufficient to distinguish Applicant’s mark in appearance, sound, connotation or commercial impression from the registered mark. Overall, we find that, particularly as applied to legally identical goods, Applicant’s mark APXX and Registrant’s mark APX look and sound substantially similar and the presumed commercial impressions of the acronyms are thus likewise very similar. 7 4 TTABUVE 8-9. The Examining Attorney, while maintaining the objection to Applicant’s request for judicial notice, addressed these arguments in the responsive brief. Serial No. 86561007 - 7 - C. Actual Confusion Applicant asserts that the seventh du Pont factor is a “meaningful factor in the instant analysis” as there are no known instances of actual confusion in the record.8 However, “[t]he lack of evidence of actual confusion carries little weight, especially in an ex parte context.” In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205 (internal citations omitted). Further, “the absence of evidence of actual confusion, under the seventh du Pont factor, by itself is entitled to little weight in our likelihood of confusion analysis unless there also is evidence, under the eighth du Pont factor, that there has been a significant opportunity for actual confusion to have occurred.” In re Association of the United States Army, 85 USPQ2d 1264, 1273 (TTAB 2007) (citations omitted). We note in this case there has been little or no chance for actual confusion. At the time the application was filed, Applicant had asserted use of its mark for less than one month. IV. Conclusion In view of the foregoing, we find that the du Pont factors relating to similarity of the marks, the legal identity in part of the goods and their channels of trade favor a finding of likelihood of confusion, and the du Pont factor relating to actual confusion is neutral. Considering all of the arguments and evidence of record as it pertains to the relevant du Pont factors in this case, including any not specifically discussed herein, we conclude that a likelihood of confusion exists because the marks are substantially 8 4 TTABVUE 10. Serial No. 86561007 - 8 - similar, the goods are identical in part, and the trade channels are the same or overlapping. Decision: The refusal to register Applicant’s mark APXX under Section 2(d) is affirmed.