Mosa Boutique, LLC

Trademark Trial and Appeal BoardSep 1, 2016

No. 86195441 (T.T.A.B. Sep. 1, 2016)

This Opinion is not a Precedent of the TTAB Mailed: September 1, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Mosa Boutique, LLC _____ Serial No. 86195441 _____ Matthew P. Frederick of Reed Smith LLP, for Mosa Boutique, LLC. Alison F. Pollack, Trademark Examining Attorney, Law Office 106, Mary I. Sparrow, Managing Attorney. _____ Before Seeherman, Mermelstein, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Mosa Boutique, LLC (“Applicant”) seeks registration on the Principal Register of the mark MOSA, in standard character format, for services identified as “retail clothing boutique; online retail clothing boutique,” in International Class 35.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s 1 Application Serial No. 86195441 was filed on February 17, 2014, under Section 1(b) of the Trademark Act, alleging a bona fide intent to use the mark in commerce. The application contains a statement: “The wording MOSA has no meaning in a foreign language.” Serial No. 86195441 - 2 - mark, when applied to the identified services, so resembles the previously registered mark MOSA,2 also in standard character format, for “retail store services in the field of beauty supplies and equipment, including skin care products,” in International Class 35, as to be likely to cause confusion, mistake, or to deceive. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed.3 We affirm the refusal to register. I. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all 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 Company, 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 and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 2 Registration No. 4630569, issued November 4, 2014. 3 We note that in its reply brief, Applicant appears to object to the labeling of the Examining Attorney’s brief, saying it was filed in TSDR as “Office Action Outgoing” and in TTABVUE as “Paper Received at TTAB,” and claiming that the brief was “not properly filed and notice not properly given.” 10 TTABVUE 5. We note that as of the time the papers were reviewed by the Board, the brief appeared (and continues to appear) in TTABVUE, the Board’s electronic file system, under the label “Examiner’s Statement.” In any event, it is clear from the document itself that it is captioned “Examining Attorney’s Appeal Brief,” and that it was timely served on Applicant’s attorney on May 26, 2016, thereby providing Applicant with notice of the brief. Serial No. 86195441 - 3 - USPQ2d 1531 (Fed. Cir. 1997). We consider the du Pont factors for which there were arguments and evidence. The others, we consider to be neutral. The Similarity/Dissimilarity of the Marks We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The mark in the cited registration is MOSA, in standard character format. Applicant’s mark also is MOSA, in standard character format. There is no argument or evidence that this term has any meaning, or that the commercial impression would be different when applied to Registrant’s services rather than to Applicant’s. Accordingly, we find that the marks are identical in sight, sound, connotation, and commercial impression, and that this first du Pont factor weighs heavily in favor of finding a likelihood of confusion. Strength of the Mark and Third Party Use Applicant argues that the term “MOSA” is commonly used by third parties and thus is only entitled to a narrow scope of protection. 7 TTABVUE 21. To this end, Applicant submitted evidence of about a dozen third-party registrations that contain the term “MOSA.” Applicant also submitted the specimens for these registrations as well as some other accompanying evidence to show the use of these marks in the marketplace. These include registrations for Maryland Oral Surgery Association Serial No. 86195441 - 4 - MOSA (and design),4 for medical and dental services; TEAMOSA,5 for “tea-based beverages”; MY MOSA,6 for “prepared wine cocktails”; MIDWEST ORGANIC SERVICES ASSOCIATION MOSA (and design),7 a certification mark for “products that are organically produced or processed/handled”; mosa (stylized),8 for gas pressurized containers and procurement services “namely, purchasing cream and food whippers, soda siphons and cream and soda chargers for others”; MOSA,9 for advertising and marketing services; The MOSA Group,10 for educational services for “personal and professional development”; CloudMosa,11 for computer software development; MOSA SCORE,12 for advisory services on “loan and mortgage” and for business management services;13 MOSA,14 for business management services in the loan and mortgage industry and advisory services relating to the “loan and mortgage” process, and HAIRMOSA for hair products.15 4 Registration No. 4578446. 5 Registration No. 4299388. 6 Registration No. 4246770. 7 Registration No. 3026528. 8 Registration No. 3649411. 9 Registration No. 4571972. 10 Registration No. 4571972. 11 Registration No. 4236364. 12 Registration No. 4361905. 13 Registration No. 4436991. 14 Registration No. 4035478. 15 Registration No. 4831881, see also hairmosa.me. Serial No. 86195441 - 5 - We note that most of these third party registrations and uses contain terms other than “MOSA,” such that MOSA would be understood as an acronym for the additional words. Furthermore, only the final one, HAIRMOSA, is for goods similar to the services at issue in this proceeding. This single use and registration is not sufficient evidence for us to find that MOSA has a significance for retail clothing boutique services or for retail store services in the field of beauty supplies and equipment. Cf. Promark v. GFA Brands, Inc., 114 USPQ2d 1232, 1244 (TTAB 2015) (“Such third- party registrations and uses are competent to show that the common term has an accepted meaning in a given field.”) Accordingly, the evidence is insuffficent for us to find that the cited registration lacks commercial strength or is entitled to a limited scope of protection. Rather, the term has no apparent meaning, and we find it to be arbitrary and inherently strong. Services/Channels of Trade When considering the similarity or dissimilarity of the services, we note that with identical marks, as we have here, the services need be less similar for us to find a likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). Moreover, 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 or intended to be used therewith, to a mistaken belief that they originate from or are in some way associated Serial No. 86195441 - 6 - 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). Applicant identifies “retail clothing boutique; online retail clothing boutique,” while the services in the cited registration are “retail store services in the field of beauty supplies and equipment, including skin care products.” Applicant argues first that the identification in the cited registration is not sufficiently definite since it contains the term “including skin care products” rather than “namely skin care products.” We have no trouble, however, understanding Registrant’s identification of retail services as naming beauty supplies and equipment that includes, but is not limited to, skin care products. To the extent Applicant believes Registrant’s identification to be inaccurate and wishes us to limit it, an ex parte proceeding is not the means to do so.16 To demonstrate the relatedness of the identified services, the Examining Attorney submitted websites from retailers that advertise the services identified by Applicant on the one hand and those identified by Registrant on the other. These are Kate Spade; Jonathan Adler; Chanel; Tory Burch; Burberry; Calvin Klein; Dior; Gucci; Marc Jacobs; Michael Kors; Oscar de la Renta; and Tony Bahama. Applicant argues that the Examining Attorney has not demonstrated a sufficient relationship between the services, arguing that that to be sold “under the same roof” is not the standard 16 See In re Thor Tech Inc., 90 USPQ2d 1634, 1638, n.11 (TTAB 2009) (“Applicant was not without a remedy. Section 18 of the Trademark Act of 1946 gives the Board the equitable remedy to cancel registrations in whole or in part, ‘restrict the goods or services identified . . . ‘”). Furthermore, despite Applicant’s protests, we do not find the prosecution of the cited registration to be relevant. Serial No. 86195441 - 7 - for confusion. 7 TTABVUE 13. In this regard, Applicant further argues that “unrelated goods in the retail context are typically only held to be confusing when the cited registration is a famous ‘designer mark.’” Id. at 14.17 Despite Applicant’s arguments, our case law does not support the theory that retail clothing boutique services are related to retail services in the field of beauty supplies and equipment only when they are sold under the mark of a famous designer. Cf. Nina Ricci S.A.R.L. v. ETF Enterprises, Inc., 203 USPQ 947, 951-52 (TTAB 1979) (considering the “fame and reputation” of opposer, Board also considered relatedness of goods in sustaining opposition); David Crystal, Inc. v. Dawson, 156 USPQ 573, 574 (TTAB 1967) (Board considered “well known marks in the garment industry” but also that the goods are “displayed and worn together.”). Given the arbitrary nature of Registrant’s mark, and the evidence that retail clothing store services and retail beauty supply services emanate from a single source, consumers who are familiar with the mark MOSA for a retail beauty supply store are likely to believe, upon encountering a retail clothing boutique operating under the identical mark, that the services have a common source. Applicant’s submission of evidence regarding clothing retailers that do not sell retail beauty supplies or equipment does not detract from the fact that since others clearly do, consumers may expect the services to derive from a single source. Indeed, 17 Applicant cited a non-precedential case which we find to be inapposite. Serial No. 86195441 - 8 - they are not only sold “under the same roof,” but sometimes more closely side-by-side, as evidenced by the following page18: The Examining Attorney has demonstrated a relationship between the services, which Applicant has not rebutted. Regarding channels of trade, to the extent that Applicant offers “retail clothing boutique” services and Registrant offers retail beauty supply store services, because the products sold through such services are both to enhance one’s appearance, we find that these services may be offered to the same class of customers. See Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983). 18 Image from MarcJacobs.com; submitted by the Examining Attorney with the June 15, 2015 Final Office Action at 19. Serial No. 86195441 - 9 - Accordingly, the second and third du Pont factors weigh in favor of finding a likelihood of confusion. II. Conclusion on Likelihood of Confusion On balance, considering all of the arguments and evidence of record as they pertain to the relevant du Pont factors, we find that the marks are identical in sight, sound, connotation, and commercial impression, and the services are related and would travel through some of the same channels of trade and be encountered by the same classes of consumers. Thus, we find that there is a likelihood of confusion between Applicant’s mark MOSA for “retail clothing boutique; online retail clothing boutique,” and the mark in the cited registration, MOSA, for “retail store services in the field of beauty supplies and equipment, including skin care products.” Decision: The refusal to register Applicant’s mark is affirmed.