Paramount Restyling Automotive Inc.

Trademark Trial and Appeal BoardAug 18, 2020

87638590 (T.T.A.B. Aug. 18, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: August 18, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Paramount Restyling Automotive, Inc. _____ Serial No. 87638590 _____ Joseph C. Andras of Myers Andras LLP, for Paramount Restyling Automotive, Inc. Saima Makhdoom, Trademark Examining Attorney, Law Office 101, Ronald R. Sussman, Managing Attorney. _____ Before Wellington, Larkin and Hudis, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Paramount Restyling Automotive, Inc. (“Applicant”) seeks registration on the Principal Register of the mark: Serial No. 87638590 - 2 - (AUTOMOTIVE disclaimed), for “on-line retail store services featuring automotive parts and accessories for off-road vehicles” in International Class 35.1 The Examining Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the following registered marks owned by the same entity (“Registrant”): PARAMOUNT, in standard characters, for “automobile dealerships” in International Class 35;2 and , AUTOMOTIVE disclaimed, for “automobile dealerships” in International Class 35.3 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. The appeal has been fully briefed, including a reply brief from Applicant. We affirm the refusal to register. 1 Application Serial No. 87638590, filed on October 9, 2017, is based on Applicant’s claim of first use anywhere and first use in commerce at least as early as October 31, 2015, pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The Application contains the following description of the mark: “The color(s) red, black and gray is/are claimed as a feature of the mark. The mark consists of a silhouette of two overlapping mountain peaks in red, with a black outline, and with a cutout shaped like the letter ‘P’ appearing in black outline, the word ‘PARAMOUNT’ in black italic letters, and the word ‘AUTOMOTIVE’ in gray italic letters. The color white is for shading purposes only and is not claimed as a feature of the mark.” 2 Registration No. 2372876 issued on August 1, 2000, renewed. 3 Registration No. 4317741 issued on April 9, 2013; a Section 8 affidavit has been accepted and a Section 15 declaration acknowledged by the Office. The Registration contains the following description of the mark: “Color is not claimed as a feature of the mark. The mark consists of the stylized word ‘PARAMOUNT’ over the stylized word ‘AUTOMOTIVE’ with the design of a car over the stylized word ‘AUTOMOTIVE’.” Serial No. 87638590 - 3 - I. Likelihood of Confusion Our determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, referred to as the “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Two key considerations are the similarities between the marks and the relatedness of the services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); 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 [or services] and differences in the marks.”). A. Similarity of the Marks We begin our likelihood of confusion analysis by first comparing Applicant’s mark: to the cited registered marks: PARAMOUNT and . We compare these marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Serial No. 87638590 - 4 - Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). “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) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. Sept. 13, 2019). We assess not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the services offered under the respective marks is likely to result. Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). Applicant’s Mark vis-à-vis Registrant’s Standard Character PARAMOUNT mark In comparing Registrant’s standard character PARAMOUNT mark to Applicant’s mark, we find them overall very similar because the dominant element of Applicant’s mark is the word PARAMOUNT. The term PARAMOUNT dominates Applicant’s mark because it is the initial and most distinctive word in Applicant’s mark. Applicant is essentially seeking to incorporate the entire registered standard character mark, with only the addition of the highly descriptive and disclaimed term AUTOMOTIVE and the stylized letter P set within a fanciful mountain design. These additional elements are not so distinctive and do not sufficiently distinguish Applicant’s mark from the registered standard character mark. With regard to the disclaimed term AUTOMOTIVE, it has very little, if any, source-identifying value because it merely describes the automotive parts being sold Serial No. 87638590 - 5 - by Applicant. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (a descriptive or generic nature term renders it less important in the comparison of marks because consumers are unlikely to focus on for source- identifying purposes). Similarly, although the mountaintop design with the letter P in Applicant’s mark is a point of difference, the term PARAMOUNT makes a stronger impression on consumers encountering Applicant’s mark, and is more likely to be remembered by them when, at a later point, requesting or referencing Applicant’s services. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)). In other words, consumers familiar with Applicant’s mark are likely to call for Applicant’s services as PARAMOUNT or PARAMOUNT AUTOMOTIVE, rather than trying to verbalize the P within a mountaintop design. Id. at 1911; see also In re Solid State Design Inc., 125 USPQ2d 1409, 1411 (TTAB 2018) (citing L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2007) (“[I]t is well settled that if a mark 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.”)). In terms of meaning and connotation, the word PARAMOUNT is defined as “superior to all others.”4 It has no particular meaning or significance in connection 4 We take judicial notice of the definition, as provided by MERRIAM-WEBSTER.COM DICTIONARY (www.merriam-webster.com) and based on MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY, ELEVENTH EDITION. See Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) and In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006) (the Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or regular fixed editions). Serial No. 87638590 - 6 - with automobiles. Applicant nevertheless argues that the term is laudatory and “merely descriptive” of Registrant’s services.5 However, Registrant’s marks are both registered on the Principal Register, without a disclaimer of PARAMOUNT in its word and design mark registration. The marks identified in these registrations are thus presumed valid and PARAMOUNT distinctive for the services; at most, the term may only be deemed suggestive of the services described in the cited registrations. Trademark Act Section 7(b), 15 U.S.C. § 1057(b). Put simply, Applicant’s argument that Registrant’s use of PARAMOUNT in its registered marks is merely descriptive of the services listed in the registrations constitutes an impermissible attack on the validity of the cited registrations. See Nat’l Pork Bd. v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479, 1494 (TTAB 2010). While we cannot and do not find PARAMOUNT to be a descriptive term in the context of Registrant’s services, we agree with Applicant only to the extent that, because of its defined meaning, the term may suggest Registrant’s superior automobile dealership services. We hasten to add, however, that in spite of any suggestive connotation, PARAMOUNT remains the sole term or dominant element of both marks. This same meaning is likely to be conveyed by both marks. The mountaintop with a letter P design element in Applicant’s mark is not ignored, but we find it does not convey any meaningful alternative connotation to Applicant’s mark. Rather, consumers may simply understand the letter P and design as a 5 7 TTABVUE 14. Serial No. 87638590 - 7 - reference to, and thus a reinforcement of, the PARAMOUNT word portion of Applicant’s mark. In sum, we find the marks are overall very similar. The differences do not overcome the strong similarity based on the fact that the registered mark PARAMOUNT has been incorporated into Applicant’s mark. Accordingly, the DuPont factor involving the similarity of these marks weighs in favor of a likelihood of confusion. Applicant’s Mark vis-à-vis Registrant’s Mark For many of the same reasons discussed above, we find these marks are overall very similar. To reiterate, the term PARAMOUNT again dominates both marks. Indeed, in Registrant’s mark here, PARAMOUNT appears above and in a larger font than the disclaimed term AUTOMOTIVE. The marks are also phonetically the same or extremely similar. The automobile design in the registered mark is not very prominent and provides a background for the descriptive word AUTOMOTIVE. Together with Applicant’s mountaintop and P design element, these design elements are less likely to make an impression on consumers than the wording PARAMOUNT. Consumers encountering both marks are more likely to remember them by this word and will use either PARAMOUNT or PARAMOUNT AUTOMOTIVE to reference Applicant’s and Registrant’s services. We again find that both marks may convey the same suggestive meaning based on the shared wording PARAMOUNT AUTOMOTIVE in connection Serial No. 87638590 - 8 - with the services identified in the Application and cited Registration. That is, this wording may evoke a sense of superior automotive-related services. We thus conclude that Applicant’s mark and Registrant’s PARAMOUNT AUTOMOTIVE and Design mark are overall very similar. The differences between these marks are not so significant and are outweighed by similarity due to the marks’ shared wording PARAMOUNT AUTOMOTIVE. Accordingly, the first DuPont factor involving the similarity of these marks weighs in favor of a finding of likelihood of confusion. B. Alleged Dilution and Weakness of the Shared Term and Registered Mark PARAMOUNT “In determining strength of a mark, we consider both inherent strength, based on the nature of the mark itself, and commercial strength or recognition.” Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017) (citing Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014)); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”). “[T]he strength of a mark is not a binary factor” and “varies along a spectrum from very strong to very weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). “The weaker [the registrant’s] mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Id. at 1676 (internal citations omitted). See also Palm Serial No. 87638590 - 9 - Bay Imps., 73 USPQ2d at 1693 (“Evidence of third-party use of similar marks on similar goods [or services] is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”). The sixth DuPont factor requires us to consider evidence of the number and nature of similar marks in use on similar services. DuPont, 177 USPQ at 567; Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016). Applicant contends that the term PARAMOUNT “is weak and entitled to a narrow scope of protection” because there is such “widespread and unfettered use of PARAMOUNT by third parties . . . [in connection with] similar goods/services.”6 In support, Applicant submitted printouts from ten different websites showing use of the term PARAMOUNT in marks in connection with various automotive services, such as used automobile sales, automotive repair, collision repair, and financing for automobile purchases.7 The evidence does not support a finding that third-party use of PARAMOUNT in marks for similar services to be “unfettered” and “widespread.” Applicant’s evidence made of record showing ten other entities using PARAMOUNT in marks for automotive-related services, pales in comparison to the level of use the Board found persuasive for purposes of weakness in other cases. See, e.g., In re Broadway Chicken, Inc., 38 USPQ2d 1559 (TTAB 1996), or Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477, 1479 (TTAB 1987), where the records contained hundreds of 6 7 TTABVUE 13-14. 7 Submitted with Applicant’s request for reconsideration filed December 2, 2019 (4 TTABVUE). Serial No. 87638590 - 10 - examples of third-party use of the shared term in question. The evidence before us also falls short of the quality and quantity of third-party use evidence that the Federal Circuit found “powerful on its face.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (14 third-party registrations and uses of paw print marks) (citing Juice Generation, 115 USPQ2d at 1674 (26 third-party registrations and uses of marks containing the words “Peace” and “Love”)). Applicant also relies on a Registration No. 4395330 for the mark PARAMOUNT CLASSIC CARS & TRUCKS, stylized with a design, arguing that because it is owned by a different entity, not Registrant, this shows that Registrant’s and Applicant’s marks can coexist.8 However, as the Examining Attorney pointed out and as is readily evident on the face of this registration file that is of record, there is clearly a relationship between Registrant and the owner of this registration. The record shows that the owner of the registration has the same physical address as Registrant and actually claimed ownership of one of the cited registrations (Reg. No. 2372876) for the standard character PARAMOUNT mark.9 In terms of conceptual strength, and as previously discussed in the context of the similarity of the marks, the term PARAMOUNT is generally suggestive of quality of 8 7 TTABVUE 10; Applicant submitted a copy of the registration file from the Office’s Trademark Electronic Search System (TESS) database with its response filed May 2, 2019, at TSDR 417-418. 9 See id.; the address listed for the owner of Reg. No. 4395330 is “1205 South Center Street, Hickory, North Carolina, 28602.” This is the same address as that listed for the Registrant in both of the cited registrations. Serial No. 87638590 - 11 - the services rendered, i.e., they are better or “superior” to others. Applicant submitted numerous third-party registrations with this term in the mark for a wide variety of non-automobile-related goods and services. Despite the fact that these third-party marks comprised of the term PARAMOUNT are registered for different goods and services, we have considered this evidence as similar to that of a dictionary definition “to illustrate how a term is perceived in the trade, industry, or ordinary parlance.” RxD Media, LLC v. Application Dev. LLC, 125 USPQ2d 1801, 1812 (TTAB 2018) (internal citation omitted). Here we find that, PARAMOUNT, as it appears in a trademark for Applicant’s and Registrant’s services is, at the very least, laudatorily suggestive. In sum, we find the term PARAMOUNT is not commercially weak or diluted based on third-party use in connection with similar services. However, the dominant element in each of the marks, PARAMOUNT, has some conceptual weakness inasmuch as it helps convey that the rendered services are higher quality. Accordingly, we find this factor neutral or slightly weighing in Applicant’s favor. C. Similarity of the Services, Trade Channels and Class of Purchasers In analyzing the second and third DuPont factors, involving the relatedness of the services and their trade channels, we look to the identifications in the application and cited registrations. See Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). In determining the relatedness of the services, in particular, we consider whether “the consuming public Serial No. 87638590 - 12 - may perceive [the services of the parties] as related enough to cause confusion about the source or origin of the . . . services.” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62 USPQ2d at 1004). Here, the Examining Attorney argues that the evidence demonstrates a “significant overlap” when comparing Registrant’s automobile dealership services with Applicant’s “on-line retail store services featuring automotive parts and accessories for off-road vehicles.”10 Specifically, the Examining Attorney relies on Internet evidence showing various automobile dealerships sell automobile parts and accessories.11 To wit, the record includes Internet printouts showing automobile dealerships for various car manufactures, such as Honda, Nissan, Jeep, Toyota, etc., that feature the sale of such parts and accessories.12 In addition, the Examining Attorney points to evidence made of record showing that online retailers may also offer “original equipment manufacturer (OEM) parts and accessories for automobiles, which are also sold by automobile dealers.”13 The record thus demonstrates that online retailers may compete for the attention and sales of consumers looking to purchase automotive parts and accessories. Put simply and by way of example, the owner of a Jeep or Toyota vehicle may seek to 10 9 TTABVUE 11. 11 Evidence attached to Office Actions dated May 30, 2019 at TSDR 10-42, and November 2, 2018 at TSDR 10-35. 12 Id., see, e.g., list of Koons dealerships that offer “parts & service” in the “Greater DC & Baltimore” region for Toyota, Volvo, Ford, GMC, Chevrolet, Buick, Kia, Jeep, Lexus and Mercedes-Benz. Office Action May 30, 2019, at TSDR 10. 13 9 TTABVUE 12; referencing printouts from the MyMoparParts website that includes a “Shop OEM Parts Catalog” link (www.mymoparparts.com), attached to Office Action dated May 30, 2019, at TSDR 20-25. Serial No. 87638590 - 13 - purchase the same replacement parts or accessories for the vehicle from either an online retailer or the dealership. Indeed, as shown in the record, websites for the dealerships may offer the automotive parts online as well.14 In other words, the same consumers may encounter the respective services in the same trade channels. We find that Registrant’s automobile dealership services and Applicant’s online retail services “featuring automotive parts and accessories for off-road vehicles,” overlap at a minimum and may be directly competitive and encountered by the same consumers in the same trade channels. Consequently, the second and third DuPont factors weigh in favor of a finding of likely confusion. D. Alleged Sophistication of Consumers and Care in Selection of Services Under the fourth DuPont factor, Applicant argues that the “expensive nature of Appellant’s and Registrant’s goods (sic) make them of a type which would necessarily be selected with care by purchasers familiar with the source or origin of the products.”15 Applicant goes on to argue:16 By definition, buyers of Appellant’s “automotive parts and accessories for off-road vehicles” either know their specific product needs, or obtain them through consultation with Appellant’s website, and in either instance they would be expected to exercise significant care in their selection. Similarly, Registrant’s goods are automobiles themselves, which Appellant previously pointed out have an average cost of $40,000, sufficiently far removed from impulse purchase territory and well within the zone of careful consideration. 14 See, e.g., Rosenthal Landmark Honda website (www.landmarkhonda.com) touting “Visit Parts Center . . . Get Parts Coupons . . . Online Parts & Accessories.” Id., at TSDR 34. 15 7 TTABVUE 18. 16 Id. Serial No. 87638590 - 14 - Aside from the fact that Applicant seeks to register its mark for services, not goods, and Registrant’s mark covers services, not goods, we are not persuaded by Applicant’s arguments. As discussed supra, the evidence demonstrates that Applicant’s and Registrant’s services may include the sale of the same vehicle parts through their respective services, including OEM parts. There is no evidence showing that vehicle parts are necessarily expensive; to the contrary, we must assume that relatively inexpensive parts and accessories, e.g., spark plugs, oil filters, etc., are some of the vehicle parts being sold by both Applicant and Registrant. The fact that the relevant consumer may be knowledgeable regarding the make/model of their own vehicle and what replacement parts are needed does not make them immune from confusion when deciding where to purchase parts and accessories. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) and Top Tobacco, LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011) (the fact that consumers are knowledgeable in a particular field does not necessarily mean that they are protected from source confusion). This is particularly true where the services are rendered under marks that are as similar as those here. Applicant relies on evidence it characterizes as “41 pairs of similar looking/sounding trademark registrations, covering services similar to those of Appellant and Registrant, [and] peacefully coexisting.”17 Applicant asserts that these registrations show that “[e]ven assuming, arguendo, that [Applicant’s and 17 Id. at 19; copies of the registrations were attached to Applicant’s request for reconsideration filed on December 2, 2019, at TSDR 10-238. Serial No. 87638590 - 15 - Registrant’s] services are similar, numerous cases permit registration of identical or similar goods/services if the purchaser is sophisticated.”18 We are not persuaded by this evidence because, as we have long and often held, each case is decided on its own facts and evidentiary record, and each mark stands on its own merits. See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009). We cannot draw any inference based on the existence of those registrations for different marks that consumers of the Applicant’s and Registrant’s services would exercise any higher level of purchasing care in discerning the source of the respective services promoted and rendered under these very similar marks. The relevant classes of consumers for both Applicant’s and Registrant’s services includes car owners looking to purchase parts or accessories for their vehicles. There is no evidence showing that these individuals will exercise any higher degree of care in their selection of services and, again, we cannot make this assumption. Rather, we must base our decision whether confusion is likely based on the least sophisticated potential customers for the services. Stone Lion Capital Partners, 110 USPQ2d at 1163 (“Although the services recited in the application also encompass sophisticated investors, Board precedent requires the decision to be based ‘on the least sophisticated potential purchasers.”‘). Accordingly, we consider this factor neutral in our analysis of whether confusion is likely. 18 Id. Serial No. 87638590 - 16 - E. Conclusion Based on the overall strong similarities between Applicant’s mark, , and the registered marks, PARAMOUNT and PARAMOUNT AUTOMOTIVE (stylized with a design), in their entireties, and the relatedness of the respective services, including our findings that such services may be promoted and offered to the same classes of purchases in the same trade channels, we find confusion is likely to occur. We make this ultimate conclusion after weighing our finding that the registered mark and shared term, PARAMOUNT, may be viewed as a laudatorily suggestive term; however, we also keeping in mind that this is the dominant element for each of the marks and that they all convey the same suggestive connotation. As often stated, even a weak mark is entitled to protection against the registration of a similar mark for related goods. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). Decision: The refusal to register Applicant’s mark on grounds of likelihood of confusion under Trademark Act Section 2(d) is affirmed.