OTRAJET Inc.

Trademark Trial and Appeal BoardJul 27, 2018

No. 87277387 (T.T.A.B. Jul. 27, 2018)

Mailed: July 27, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re OTRAJET Inc. _____ Serial No. 87277387 _____ John R. Guice, Jr. of Guice Patents PLLC, for OTRAJET Inc. Marilyn Izzi Vengroff, Trademark Examining Attorney, Law Office 112, Renee Servance, Managing Attorney. _____ Before Zervas, Hightower, and Lynch, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Applicant OTRAJET Inc. seeks to register the mark on the Principal Register for the following goods in International Class 12 (as amended): Tires; Tires, solid, for vehicle wheels or wheelchairs; Tires for bicycles, cycles or wheelchairs; Inner tubes for bicycles, cycles; Bicycles; Covers for Cycle handle bars; Saddle covers for bicycles, cycles or motorcycles; Tubeless tires for bicycles, cycles; Bicycle wheel rims; Cycle handle bars; This Opinion Is Not a Precedent of the TTAB Serial No. 87277387 - 2 - Panniers adapted for cycles; Saddles for bicycles, cycles or motorcycles; Safety seats for children, for vehicles.1 The description of the mark states: “The mark consists of the stylized wording ‘NEXO’ with the letter ‘E’ formed by an incomplete polygon and arrow.” The mark also includes the following translation statement: “The English translation of ‘NEXO’ in the mark is ‘NEXUS’.” The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark is likely to cause confusion with the mark registered on the Principal Register for: Bicycle parts, namely, hubs, internal gear hubs, gear shift levers, cranks, crank sets, chain wheels, brake levers, front brakes, rear brakes in International Class 12.2 Applicant filed a request for reconsideration after the refusal was made final. After the request for reconsideration was denied, Applicant timely appealed, and briefing is complete. We affirm. 1 Application Serial No. 87277387 was filed on December 16, 2016, under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the mark in commerce. Color is not claimed as a feature of the mark. 2 Registration No. 2542372, issued February 26, 2002; renewed. A second registration also was cited against the application but, because the second cited registration has been cancelled, the Examining Attorney withdrew that refusal in her brief. 6 TTABVUE 3. Serial No. 87277387 - 3 - I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. 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., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, 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, 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.”). A. Similarity of the Goods We begin with the second du Pont factor, the similarity of the goods. The test is not whether consumers would be likely to confuse the goods, but rather whether they would be likely to be confused as to their source. In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012). Therefore, to support a finding of likelihood of confusion, it is not necessary that the goods be identical or even competitive. It is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source, or that there is an association or connection between the sources. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). Serial No. 87277387 - 4 - Applicant’s identified goods include bicycles and bicycle parts and accessories, which are related on their face to Registrant’s identified goods: “bicycle parts, namely, hubs, internal gear hubs, gear shift levers, cranks, crank sets, chain wheels, brake levers, front brakes, rear brakes.” Applicant does not attempt to distinguish the goods in its appeal brief. In our likelihood of confusion analysis, the second du Pont factor supports a determination that confusion is likely. B. Similarity of the Marks We next address the first du Pont factor, the similarity of the marks. In a likelihood of confusion analysis, we compare the marks in their entireties for similarities and dissimilarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014). “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) (quotation omitted). 1. Connotation To compare the connotation of the two terms, we turn to the doctrine of foreign equivalents. Under this guideline, in a likelihood of confusion analysis, foreign words from common, modern languages are translated into English to determine similarity of connotation with English words. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008). The doctrine is applied Serial No. 87277387 - 5 - only when it is likely that “the ordinary American purchaser would ‘stop and translate [the word] into its English equivalent.’” Palm Bay, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)). The Board has determined that “the ordinary American purchaser” comprises all American purchasers, including those knowledgeable in both English and the pertinent foreign language who ordinarily would be expected to translate words into English. In re Highlights for Children, Inc., 118 USPQ2d 1268, 1271 (TTAB 2016); La Peregrina, 86 USPQ2d at 1648; In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006). “Nexo” is a Spanish term that may be translated into English as “nexus.”3 There is no question that Spanish is a common, modern language spoken or understood by an appreciable number of U.S. consumers. According to data released by the U.S. Census Bureau in 2015, Spanish is the second most common language in the United States after English, with more than 37 million people speaking Spanish at home, 21 million of whom also speak English “very well.”4 On the facts and circumstances of this case, we find that the many bilingual consumers in the United States who understand both Spanish and English will stop and translate into its English equivalent “nexus.” 3 DAVID L. GOLD, RANDOM HOUSE LATIN-AMERICAN SPANISH DICTIONARY 168 (1997), August 21, 2017 Final Office Action at TSDR 2-4; see also COLLINS SPANISH-ENGLISH DICTIONARY online (translating “nexo” as “‘link’, ‘connection’, ‘nexus (form)’”), id. at TSDR 5-8. 4 “Detailed Languages Spoken at Home and Ability to Speak English for the Population 5 Years and Over for the United States: 2009-2013,” at https://www.census.gov/data/tables/ 2013/demo/2009-2013-lang-tables.html. Because the U.S. Census is a standard reference, we may, and do, take judicial notice of this information. In re Olin Corp., 124 USPQ2d 1327, 1331 n.12 (TTAB 2017). This data is more recent than the census data submitted by the Examining Attorney. See August 21, 2017 Final Office Action at TSDR 22-41. Serial No. 87277387 - 6 - We find and the lightly stylized mark to be foreign equivalents and therefore identical in connotation to consumers with knowledge of both Spanish and English. The relative similarity in appearance of the words adds to the relevant consumer’s tendency to stop and translate, as well as to consumer understanding of the mark as a foreign language equivalent of “nexus.” See In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831-32 (Fed. Cir. 2007); La Peregrina, 86 USPQ2d at 1649-50. 2. Appearance and Sound Generally, consumers are more inclined to focus on the first part of a mark. See, e.g., Palm Bay, 73 USPQ2d at 1692; Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Applicant’s mark and the cited mark share the first syllable “NEX,” rendering the marks phonetically similar, although their second syllables (“O” and “US,” respectively) differ. In the case of marks that consist of wording and a design component such as the stylized “E” in Applicant’s mark, the verbal portion normally is accorded greater weight because it is likely to make a greater impression upon purchasers, to be remembered by them, and to be used by them to request the goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); see also, e.g., In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018). While the stylization of the “E” in Applicant’s mark distinguishes it visually from the cited mark, the stylization does not diminish their phonetic similarity. We find the marks to be similar in sound but somewhat distinguishable in appearance. Serial No. 87277387 - 7 - 3. Applicant’s Argument that the Marks are Dissimilar In its brief, Applicant argues that the two marks are distinguished even under the doctrine of foreign equivalents by the stylized “E” in its mark: Regarding the doctrine of foreign equivalents, if an “ordinary American purchaser” were to translate “NEXO” to mean “NEXUS” there would be no likelihood of confusion between the Applicant’s mark and the two cited registrations5 because the translation would not include the stylized “E” of the Applicant’s mark. Applicant traverses the rejection of the Applicant’s Mark under the doctrine of foreign equivalents because the translation would not include the highly stylized letter “E” and there would be no[ ] likelihood of confusion. Appeal Brief at 5, 4 TTABVUE 8. Applicant’s own description of the mark refers to “the stylized wording ‘NEXO’.” While we agree that the “E” in Applicant’s mark is highly stylized, we find that it does not mask the translated meaning of Applicant’s mark as “nexus.” We compare marks for similarity in appearance, sound, meaning, and commercial impression, and similarity in any one of those elements may be sufficient to find the marks similar under the first du Pont factor. E.g., In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). We have found Applicant’s mark to be distinguishable in appearance from the cited mark but similar to it in sound and identical in connotation for bilingual consumers. In view of their identical meanings and phonetic similarity, we find the two marks to be highly similar in overall commercial impression. The first du Pont factor thus weighs in favor of a finding that confusion is likely. 5 The second cited registration was cancelled and that refusal withdrawn. See n.2 supra. Serial No. 87277387 - 8 - C. Consumer Sophistication Finally, Applicant briefly argues under the fourth du Pont factor that “prospective purchasers of tire related goods are sophisticated in nature and would be well informed regarding the items available in the marketplace.” Appeal Brief at 8, 6 TTABVUE 11. Applicant neither explains nor provides any evidence substantiating this argument, and there is nothing in the record supporting a finding that consumers of the identified goods are sophisticated. We find this factor to be neutral. II. Conclusion We have considered all of the arguments and evidence as they pertain to the relevant du Pont likelihood of confusion factors. The first, second, and third du Pont factors weigh in favor of a finding that confusion is likely, while the fourth factor is neutral. To the extent that any other du Pont factors for which no evidence was presented by Applicant or the Examining Attorney may nonetheless be applicable, we treat them as neutral. Applying the doctrine of foreign equivalents, we find that confusion is likely to occur in the marketplace. We conclude that bilingual (English and Spanish) consumers familiar with Registrant’s bicycle parts sold under the mark would be likely to believe, upon encountering the stylized Spanish equivalent for Applicant’s identified bicycles and bicycle parts and accessories, that the goods originated with or are associated with or sponsored by the same entity. We find that Applicant’s mark is likely to cause confusion with the Serial No. 87277387 - 9 - mark in cited Registration No. 2542372 when used in association with the goods identified in the application. Decision: The refusal to register Applicant’s mark is affirmed.