Natalie Scantlin

Trademark Trial and Appeal BoardMar 27, 2013

No. 85362985 (T.T.A.B. Mar. 27, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: March 27, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Natalie Scantlin ________ Serial No. 85362985 _______ Charles C. McCloskey of Charles C McCloskey LLC for Natalie Scantlin. Simon Teng, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Cataldo, Taylor and Shaw, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Natalie Scantlin, filed an application to register on the Principal Register THE PONYTAIL CAP (CAP disclaimed) as a mark in standard characters for “baseball caps; baseball caps and hats; cap visors; caps; hats” in International Class 25.1 1 Application Serial No. 85362985 was filed July 5, 2011 under Section 1(a) of the Trademark Act, based on applicant’s assertion of January 1, 2010 as a date of first use of the mark anywhere and January 2, 2010 as a date of first use of the mark in commerce. Ser. No. 85362985 2 The trademark examining attorney refused registration under Section 2(d) of the Trademark Act on the ground that applicant’s mark, as used in connection with its goods, so resembles the mark previously registered on the Principal Register in standard characters for “handbags; tote bags” in International Class 18,2 as to be likely to cause confusion. In addition, the examining attorney refused registration under Trademark Act Section 2(e)(1) on the ground that the mark merely describes the identified goods. When the refusals were made final, applicant appealed. Applicant and the examining attorney filed briefs on the issue under appeal. 2 Registration No. 3898993 issued January 4, 2011 with the following statements: “The mark consists of the wording ‘PONYTAIL CAP’ over a design of a silhouette of a lady’s head wearing a ponytail cap.” “Color is not claimed as a feature of the mark.” Ser. No. 85362985 3 Likelihood of Confusion 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, 567 (CCPA 1973). See also In re Majestic Distilling Co., 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 goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). The Marks We begin our analysis by looking at the similarities and dissimilarities of the marks in the application and registration when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether Ser. No. 85362985 4 the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. In comparing the marks, we note that applicant’s mark, THE PONYTAIL CAP, incorporates the entirety of the wording in registrant’s PONYTAIL CAP and design mark. The presence of the term “THE” in applicant’s mark does not create a significant difference between the marks. Accord Jay-Zee, Inc. v. Hartfield-Zodys, Inc., 207 USPQ 269 (TTAB 1980); and United States National Bank of Oregon v. Midwest Savings and Loan Association, 194 USPQ 232, 236 (TTAB 1977). The marks are similar in that they contain the identical wording PONYTAIL CAP. The design of the silhouette of a woman with a ponytail wearing a cap in registrant’s mark reinforces the wording PONYTAIL CAP and draws additional attention thereto. Also, it is settled that when a mark comprises both a word and a design, the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For these reasons, we find that PONYTAIL CAP, the wording shared by applicant’s mark and that of registrant, is the Ser. No. 85362985 5 dominant term in both and accordingly it is entitled to more weight in our analysis. With regard to the strength of registrant’s mark, we note that applicant has made of record a number of third- party registrations for marks containing the term PONYTAIL or the term CAP, but not both, for a variety of clothing items. Because the proffered third-party registrations do not contain the terms PONYTAIL CAP common to both marks, we are not persuaded that the mark in the cited registration is weak or otherwise entitled to a narrow scope of protection as applied to registrant’s identified goods, namely, handbags and tote bags. It further is settled that evidence of weakness or dilution consisting solely of third-party registrations is generally entitled to little weight in determining the strength of a mark, because such registrations do not establish that the registered marks identified therein are in actual use in the marketplace or that consumers are accustomed to seeing them. See AMF Inc. v. Am. Leisure Prods., Inc., 177 USPQ 268, 269 (C.C.P.A. 1973). Based upon the foregoing, we find that, when viewed in their entireties, the marks THE PONYTAIL CAP and PONYTAIL CAP and design are more similar than they are different in terms of appearance, sound, connotation and overall Ser. No. 85362985 6 commercial impression. Applicant has taken the wording in registrant’s mark, which term is reinforced by the design therein, and added a definite article “THE” to it. Thus, it is likely that the marks would be viewed as variations of each other, but still pointing to the same source. Accordingly, this du Pont factor favors a finding of likelihood of confusion. The Goods We next turn to a consideration of the goods. It is not necessary that the goods at issue be similar or competitive, or even that they move in the same channels of trade, to support a holding of likelihood of confusion. It is sufficient instead that the respective goods are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer. See In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). In this case, the examining attorney has made of record nine use-based, third-party registrations which show that various entities have adopted a single mark for goods that are identified in both applicant’s application and the Ser. No. 85362985 7 cited registration.3 Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). In addition, evidence made of record by the examining attorney from registrant’s internet website and social media site indicate that registrant also offers for sale hats specifically designed for women with ponytails in addition to the handbags and tote bags identified in its registration. We are not persuaded by applicant’s arguments that because the goods at issue are classified in different International Classes, confusion is unlikely. It is well- settled that the determination concerning the proper classification of goods is a purely administrative determination unrelated to the determination of likelihood of confusion. Jean Patou, Inc. v. Theon, Inc., 29 USPQ2d 1771, 1774 (Fed. Cir. 1993). In this case, the evidence of record suggests that applicant’s and registrant’s goods are related apparel and 3 These include Registration Nos. 4042941; 4007402; 4017002; 4021547; 3943776; 3914586; 3997039; 4024027; and 4022908. Ser. No. 85362985 8 accessory items that may emanate from a common source. As a result, this du Pont factor further favors a finding of likelihood of confusion. Channels of Trade and Classes of Purchasers We are not persuaded by applicant’s argument, unsupported by evidence, that registrant’s goods move in different channels of trade from those in which its goods are encountered and the conditions of their sale is such that they would be encountered by different classes of consumers. It is settled that in making our determination regarding the relatedness of the parties’ goods, we must look to the goods as identified in the involved application and cited registration. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). As identified in the involved application and cited registration, neither applicant’s headwear nor registrant’s handbags and totebags are limited to any particular channels of trade or classes of purchasers. That is to say, neither identification of goods includes any restrictions as to price, target market, or manner in which the goods are offered for sale. Accordingly, both applicant’s goods and registrant’s goods must be presumed Ser. No. 85362985 9 to move in all normal channels of trade and be available to all classes of potential consumers. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Summary We have discussed above all of the du Pont factors for which we have evidence. All others, to the extent they are applicable, are considered to be neutral. In summary, weighing all of the evidence of record as it pertains to the relevant du Pont factors, we find that a likelihood of confusion exists as contemplated by Section 2(d) of the Act. Mere Descriptiveness It is well-settled that a term is considered to be merely descriptive of goods and/or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately describes an ingredient, quality, feature or characteristic thereof or if it directly conveys information regarding the nature, function, purpose or use of the goods and/or services. See Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052. See also In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). It is not necessary that a term describe all of the properties or functions of the goods and/or services in order for it to be considered to be merely descriptive Ser. No. 85362985 10 thereof; rather, it is sufficient if the term describes a significant attribute or feature about them. Moreover, whether a term is merely descriptive is determined not in the abstract, but in relation to the goods and/or services for which registration is sought. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). Thus, “[w]hether consumers could guess what the product is from consideration of the mark alone is not the test.” In re American Greetings Corp., 226 USPQ 365 (TTAB 1985). In support of the refusal, the examining attorney has made of record a dictionary definition of “ponytail” and an open-source online encyclopedia entry for “cap.” According to its definition, a “ponytail” is “long hair that is tied at the back of the head and hangs down,”4 and a “cap is a form of headgear. Caps have crowns that fit very close to the head and have no brim or only a visor.”5 The examining attorney has further made of record articles and advertisements retrieved from Internet webpages. The following excerpts are illustrative:6 4 Macmillandictionary.com. 5 Wikipedia.org. 6 Images reproduced below are from loudonhoundsgear.com/ladies- pony-tail-cap. Ser. No. 85362985 11 Ser. No. 85362985 12 HATS AND VISORS FlexFit Ponytail Cap Same flexfit styling and construction, with opening for ponytail.7 Ladies try a unique new look in our Low Profile Pro Style Ponytail Peak Cap. Made from 100% cotton, this soft pink hat features a 4” long and 11½” wide pre-curved bill attached to the 4 paneled crown measuring 4” deep, and fitted with an inner terry cloth sweat band. However, the truly unusual feature to this hat is the large ponytail hole opening in the back of the cap with an adjustable strap tab, so you no longer have to fuss, pull and tug to get your hair out of a small hat hole.8 Carhatt Girls’ Signature Canvas Ponytail Holder Cap Help her block the sun with Carhartt’s signature canvas cap. Made of 9-ounce, 100& cotton canvas, it features a pre-curved visor, ponytail holder and Carhartt label on the front.9 Saucony DryLete Ponytail Skull Cap ViziPro Featuring exterior DryLete Material to block the chill and a PromoLite-lined interior band to wick moisture as you heat up, the Saucony DryLete Ponytail Skull Cap ViziPro is a stylish way to keep your head and ears warm in cool to cold weather. This form-fitting head piece also features a rear spot for your ponytail to pass through and neon ViziPro accents to make you more visible to drivers.10 In the instant case, the evidence made of record by the examining attorney supports a finding that, as applied to applicant’s “baseball caps; baseball caps and hats; cap visors; caps; hats,” the term THE PONYTAIL CAP would 7 Watersafety.com/lifeguard-uniforms 8 Amazon.com/Otto-Caps 9 Getzs.com 10 Runningwarehouse.com Ser. No. 85362985 13 immediately describe, without conjecture or speculation, a significant characteristic or feature of such goods, namely, that they are particularly suited for wear by individuals with ponytails. The above-referenced dictionary definition and encyclopedia entry establish that THE PONYTAIL CAP merely describes a type of close-fitting headwear – a CAP - that accommodates long hair gathered at the back of the neck and hangs down – a PONYTAIL. As identified, applicant’s broadly recited “baseball caps; baseball caps and hats; cap visors; caps; hats” must be presumed to include such headwear items that accommodate ponytails. Thus, as defined, THE PONYTAIL CAP merely describes a central function, feature or characteristic of the recited goods. In addition, the internet articles and advertisements submitted by the examining attorney establish that the ability of goods identified by applicant’s THE PONYTAIL CAP mark to accommodate a ponytail are useful to wearers whose hair is so styled. Material obtained from the Internet is acceptable in ex parte proceedings as evidence of potential public exposure to a term. See In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB 2002). We note applicant’s argument that its goods do not themselves feature a ponytail, as do certain caps sold with Ser. No. 85362985 14 synthetic hair attached to be worn as a costume or disguise.11 However, the evidence of record clearly establishes that THE PONYTAIL CAP describes caps designed to be worn with hair styled in a ponytail. The descriptive nature of applicant’s mark as applied to its goods is not diminished by the fact that the term comprising the mark may also apply to other types of headwear worn for what we presume are humorous purposes. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ at 593. Based upon the evidence of record, we find that applicant’s mark is merely descriptive of the recited goods as contemplated by Section 2(e)(1) of the Act. Decision: The refusal of registration is affirmed on both grounds. 11 The examining attorney made of record internet advertisements for baseball caps featuring attached synthetic hair in various forms, including ponytails.