Phantasya Collection GmbH

Trademark Trial and Appeal BoardJul 24, 2014

No. 85934149 (T.T.A.B. Jul. 24, 2014)

This Opinion is Not a Precedent of the TTAB Mailed: July 24, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Phantasya Collection GmbH _____ Serial No. 85934149 _____ Nicholas D. Wells of Wells IP Law, LLC for Phantasya Collection GmbH. Christopher W. Wells, Trademark Examining Attorney, Law Office 106, Mary I. Sparrow, Managing Attorney. _____ Before Taylor, Lykos, and Masiello, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: Phantasya Collection GmbH (“Applicant”) seeks registration on the Principal Register of the mark PHANTASYA in standard character format for “jewelry; necklaces; rings; bracelets; earrings; pearls; brooches; silver ornaments; threads of precious metal; precious stones; horological and chronometric instruments” in International Class 14 and “[p]urses; handbags; carry-all bags; wallets; briefcases” in International Class 18.1 1 Application Serial No. 85934149, filed May 16, 2013, alleging a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 85934149 - 2 - Registration was refused under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark so resembles the following three registered marks owned by two different entities that, when used on or in connection with Applicant’s identified goods, it is likely to cause confusion or mistake or to deceive: Registration No. 3992956, owned by Fantasia by DeSerio, Inc., for the mark FANTASIA BY DeSERIO in standard character format on the Principal Register for “jewelry” in International Class 14;2 Registration No. 4288065, owned by Fantasia Accessories, Ltd., for the mark FANTASIA.COM in standard character format on the Principal Register for “[s]unglasses” in International Class 9; “[h]andbags, backpacks, all-purpose sport bags, tote bags, carry-on bags” in International Class 18; “[h]air brushes, hair combs” in International Class 21; “[s]carves, hats, gloves, mufflers” in International Class 25; and [b]arrettes, ponytail holders, hair bands” in International Class 26;3 and Registration No. 4288066, also owned by Fantasia Accessories, Ltd. for the mark FANTASIA in standard character format on the Principal Register for “[s]unglasses” in International Class 9; “[h]andbags, backpacks, all-purpose sport bags, tote bags, carry-on bags” in International Class 18; “[h]air brushes, hair combs” in International Class 21; and “[s]carves, hats, gloves, mufflers” in International Class 25.4 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the Request for Reconsideration, the appeal was resumed. We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont 2 Registered July 12, 2011. 3 Registered February 12, 2013. 4 Registered February 12, 2013. Serial No. 85934149 - 3 - de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also, In re Majestic Distilling Company, Inc., 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 (CCPA 1976). These factors, and the other relevant du Pont factors, are discussed below. At the outset we note that Applicant concedes that the goods identified in its application and the cited registrations are identical in part (“jewelry” as to the registered mark FANTASIA BY DeSERIO and “handbags” as to the registered marks FANTASIA and FANTASIA.COM). Applicant’s Brief, p. 6. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Because there are no limitations as to channels of trade or classes of purchasers in the description of goods in the cited registrations, we presume the goods move in all normal channels of trade for such goods and are available to all potential classes of ordinary consumers of such goods. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Furthermore, because the goods are identical in part, we must presume that these goods travel in the same channels of trade to the same classes of consumers. See In re Viterra Inc., Serial No. 85934149 - 4 - 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of purchasers, the Board was entitled to rely on the legal presumption that identical goods travel in the same channels of trade to the same classes of purchasers in determining likelihood of confusion). Accordingly, the second and third du Pont factors (the relatedness of the goods as described in the application and registration and similarity of established, likely to continue trade channels) weigh in favor of finding a likelihood of confusion. In light of Applicant’s concession, the crux of this appeal turns on the first du Pont likelihood of confusion factor which involves an analysis of the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and 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) (“Palm Bay”). “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). Our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It Serial No. 85934149 - 5 - is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). Applicant’s and Registrants’ marks are comprised, either in whole or in part, of the phonetically equivalent terms “phantasya” or “fantasia.” Because each of these terms appears first and is arbitrary when considered in relation to the respective goods, each of them constitutes the dominant portion of Applicant’s and Registrants’ respective marks. See Palm Bay, 73 USPQ2d at 1692 (internal citation omitted) (“the Board correctly weighed the relative importance of VEUVE and CLICQUOT. VEUVE is an arbitrary term as applied to champagne and sparkling wine, and thus conceptually strong as a trademark.”). Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See id. See also Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating that “it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). As such, Applicant’s and Registrants’ marks each engender a highly similar commercial impression. This is so, despite the fact that one of the registered marks, FANTASIA.COM, is comprised of a domain name, because the top-level domain or TLD “.com” carries no source identifying significance. Cf. In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009). With regard to the cited mark FANTASIA BY DeSERIO, Applicant points to the additional wording BY DeSERIO as more distinctive and therefore obviating any similarities. We disagree. Given that the mark commences with the arbitrary term FANTASIA it is Serial No. 85934149 - 6 - more likely that prospective consumers will pay less attention to the tag line BY DeSERIO and instead treat the first term in the mark as the dominant source- identifying element. Applicant admits that its applied-for mark PHANTAYSA and the term FANTASIA in the cited marks are phonetic equivalents that may be pronounced in a similar manner by consumers. Nonetheless, Applicant asserts that the similarity ends there, pointing to the difference in appearance in the cited marks commencing with the letter “f” as opposed to the letters “ph” and ending with the suffix “-asia” rather than “-asya.” In support thereof, Applicant relies on prior case law where no likelihood of confusion was found between phonetically similar marks having different appearances. Applicant also argues that because an increasing number of consumers learn about goods and services via the Internet, it is reasonable to find that the appearance of the mark may be more significant than the sound of the mark because consumers are more likely to see such marks but not hear them pronounced. We disagree with Applicant’s contention that in this instance it is proper to place more weight on the appearance as opposed to the sound of the involved marks. The Board has, as applicant suggests, the discretion to place more weight on a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data, 224 USPQ at 751. As explained above, the dominant portion of each mark may be pronounced in an identical manner. See In re Viterra Inc., 101 USPQ2d at 1912 (“[T]here is no correct Serial No. 85934149 - 7 - pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark.”). This similarity in sound, combined with the partial visual similarity of the marks and the fact that Applicant’s and Registrant’s goods are in part identical, increases the likelihood of confusion. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992) (because the goods are in part identical, the degree of similarity between the marks that is necessary to support a finding of likely confusion declines). In addition, Applicant argues that the connotation and commercial impression of the involved marks are distinct insofar as the registered marks bring to mind the “world-famous” animated feature film “Fantasia” by Walt Disney whereas Applicant’s mark is “a coined term that carries none of the visual connection to or connotation of the Disney film.” (Applicant’s Brief, pp. 8-9). In support thereof, Applicant submitted an entry from Wikipedia for “Fantasia (film).” Office Action Response (Oct. 29, 2013). While indeed the registered marks are spelled in the same manner as the Disney film, Applicant submitted no evidence to show that consumers will necessarily associate Registrants’ marks with the film. Moreover, the phonetic similarity of Applicant’s mark to the designation “Fantasia” suggests that Applicant’s mark, too, may bring to mind the Disney film. We therefore find that Applicant’s mark is similar in sound, connotation, and commercial impression to each of the cited registered marks. This first du Pont factor therefore weighs in favor of finding a likelihood of confusion as well. Serial No. 85934149 - 8 - To the extent that there are any other du Pont factors which may be relevant, we treat them as neutral. After considering all of the evidence of record and arguments pertaining to the du Pont likelihood of confusion factors, we find that the first three du Pont factors weigh in favor of finding a likelihood of confusion. Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.