PM Investigations, Inc.

Trademark Trial and Appeal BoardDec 2, 2009

No. 77450479 (T.T.A.B. Dec. 2, 2009)

Mailed: 12/2/09 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re PM Investigations, Inc. ________ Serial Nos. 77450085, 77450479 and 77450483 _______ Anthony F. Bonner of Thomas, Kayden, Horstemeyer & Risley for PM Investigations, Inc. Jason F. Turner, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _______ Before Quinn, Bergsman and Ritchie, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Applicant filed intent-to-use applications to register the mark shown below for “autographed photographs, erasers, highlighters, paintbrushes, pencil cases, pencil sharpeners, stickers, THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser. Nos. 77450085; 77450479; and 77450483 2 bumper stickers, notebooks, paper, pencils, pens and adhesive note paper” in Class 16 (Ser. No. 77450085 filed April 16, 2008); “shirts and hats” in Class 25 (Ser. No. 77450479 filed April 17, 2008); and “baseballs, stuffed toys, flying discs, tennis balls, and whistles” in Class 28 (Ser. No. 77450483 filed April 17, 2008). The mark is described as follows: “The mark consists of a dog with a container around its neck.” Although not specifically indicated in the description of the mark, the container displays the stylized letters “ICIE.” The trademark examining attorney refused registration in each application under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when applied to applicant’s goods, so resembles the previously registered mark ICEE (in typed form) for the goods and services set forth below as to be likely to cause confusion. Watches and jewelry pins (Class 14); Pens and pencils (Class 16); Beach bags (Class 18); Portable coolers and cooler bags (Class 21); Towels (Class 24); T-shirts, hats, sweatshirts and jackets (Class 25); Ser. Nos. 77450085; 77450479; and 77450483 3 toys, namely banks, stuffed animals, trucks, throwing discs, tops, rings, puzzles, yo-yos; and Christmas ornaments and Christmas stockings (Class 28); and Entertainment services, namely performances by a costumed character (Class 41).1 When the refusal was made final in each application, applicant appealed. Applicant and the examining attorney filed briefs. The appeals involve common issues of law and fact. Further, the records are essentially identical. Accordingly, we will decide the appeals in a single opinion. Applicant argues that the literal portion of its mark, ICIE, is different from registrant’s mark ICEE, and moreover, applicant’s mark is clearly dominated by its dog design, thereby distinguishing the marks in their entireties. More specifically, applicant argues as follows: The design portion of applicant’s mark consists of a St. Bernard with a container around its neck. St. Bernard dogs were originally bred, and are known to be, rescue dogs and watchdogs. The breed is known for saving the lives of stranded travelers. 1 Registration No. 1942417, issued December 19, 1995; Section 8 affidavit accepted, Section 15 affidavit acknowledged. Ser. Nos. 77450085; 77450479; and 77450483 4 In addition, applicant’s mark includes a word portion with the letters “ICIE.” The letters “ICIE” stand for “In Case of Internet Emergency,” which is an Internet security system/method that protects users (e.g., children) from suspicious and/or dangerous activities. Thus, the overall commercial impression of applicant’s mark is associated with the ICIE acronym. Indeed, when applicant’s mark is considered in its entirety – a St. Bernard that connotes protection and the ICIE acronym that represents “In Case of Internet Emergency” – applicant’s mark creates an overall commercial impression of protection, safeguard, and/or watchdog. (Brief, pp. 8-9). Applicant further contends that registrant’s single-word mark, by contrast, is the phonetic equivalent of “icy,” connoting intense cold. Thus, according to applicant, the marks are different in appearance, meaning and overall commercial impression. Although applicant acknowledges that the goods are similar, this factor is outweighed by the differences between the marks. The examining attorney maintains that the goods are identical in part or otherwise closely related. As to the marks, the examining attorney focused his attention on the literal portion of applicant’s mark, contending that ICIE is the dominant portion, and that ICIE is similar to the entirety of registrant’s mark, ICEE. The examining Ser. Nos. 77450085; 77450479; and 77450483 5 attorney also argues that the marks convey similar overall commercial impressions: “the word portions of both marks ‘ICIE’ and ‘ICEE’ are phonetic equivalents of each other and the term ‘icy’ which is defined as intensely cold. The commercial impressions of the terms meaning intensely cold is fortified by the applicant’s design of [a] Saint Bernard with a barrel around the neck, as the animals were used in rescuing travelers in cold environments such as the Alps.” (footnotes omitted) (Brief, pp. 6-7). Lastly, the examining attorney urges that any doubt about the likelihood of confusion must be resolved against applicant in favor of the prior registrant. In support of the refusal, the examining attorney relied upon dictionary and encyclopedia listings, as well as copies of third-party registrations to show that the goods are related. 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 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (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 Ser. Nos. 77450085; 77450479; and 77450483 6 and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We turn first to the second du Pont factor regarding the similarity between the goods. It is not necessary that the respective goods be competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. The issue is not whether consumers would confuse the goods themselves, but rather whether they would be confused as to the source of the goods. It is sufficient 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 originated from the same producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). With respect to the goods, in Class 16, the application lists “pens and pencils,” and the cited registration lists “pens and pencils”; in Class 25, the application lists “shirts and hats,” and the cited registration lists “t-shirts and hats”; in Class 28, the application lists “stuffed toys and flying discs,” and the Ser. Nos. 77450085; 77450479; and 77450483 7 cited registration lists “stuffed animals and throwing discs.” Accordingly, the goods in each class of the applications and corresponding class in the registration are identical in part, or otherwise very closely related. Likelihood of confusion may be found based on any item that comes within the identification of goods in any of the classes of the involved application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). So as to remove any doubt about the similarity between the goods, the examining attorney submitted several use- based third-party registrations showing that the same entity has registered a single mark covering both types of goods of applicant and registrant (including the remaining goods not specifically referred to above). “Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 Ser. Nos. 77450085; 77450479; and 77450483 8 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785- 86 (TTAB 1993). Insofar as the trade channels and classes of purchasers are concerned, we note that there are no trade channel limitations in either applicant’s or registrant’s identification of goods. Accordingly, we must presume that the goods, as identified, are marketed in all normal trade channels for such goods and to all normal classes of purchasers for such goods. In re Elbaum, 211 USPQ 639 (TTAB 1981). Thus, given the identity or otherwise close relationship between the goods, we presume that the goods move in the same or similar trade channels (e.g., department stores, mass merchandisers, warehouse stores and the like). Further, given the absence of any limitation as to purchasers, we presume that the goods are bought by the same classes of consumers, including ordinary ones. Given the relatively inexpensive nature of the goods, they would be subject to impulse purchase made by ordinary consumers with nothing more than ordinary care. The factors involving the goods weigh in favor of a fining of likelihood of confusion. With respect to the marks, we must compare the marks in their entireties as to appearance, sound, connotation Ser. Nos. 77450085; 77450479; and 77450483 9 and commercial impression to determine the similarity or dissimilarity between them. 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 the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. In considering the marks, we note that when marks are used in connection with identical goods, as is the case herein, at least in part, in each of the classes, “the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). With respect to registrant’s mark, it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for rational reasons, more or Ser. Nos. 77450085; 77450479; and 77450483 10 less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). As the examining attorney correctly points out, where both words and a design comprise the mark, then the words are normally accorded greater weight because the words are likely to make an impression upon purchasers, would be remembered by them, and would be used by them to request the goods. In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). In applicant’s mark, rather than a word, the letters ICIE appear which, according to applicant, mean “In Case of Internet Emergency.” Although we recognize the proposition that generally the words are dominant in a words-design composite mark, this merely is a guideline, and a design element may be dominant if more conspicuous than the accompanying words. See Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272, 276 (CCPA 1974). The Federal Circuit has cautioned that “[t]here is no general rule as to whether letters or design will dominate Ser. Nos. 77450085; 77450479; and 77450483 11 in composite marks.” In re Electrolyte Laboratories, Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990). In the present case, the design portion of applicant’s mark is visually prominent and distinctive and, to our eye, the design clearly dominates the overall commercial impression of the mark. We suspect that many consumers may not even notice the letters within the container around the dog’s neck. And, even if the letters were noticed, a consumer may have a difficult time discerning the specific letters being displayed due to their stylization. If consumers do, in fact, perceive the letters to be ICIE, we presume that the letters may be pronounced as an acronym that sounds the same (“icy”) as registrant’s mark ICEE. And, the record falls short of establishing that consumers would perceive ICIE as meaning “In Case of Internet Emergency.” Nevertheless, ICIE and ICEE are not identical, and the very prominent design feature of applicant’s mark creates a substantially different commercial impression than that created by registrant’s mark. We also do not agree that applicant’s mark shares an “intensely cold” connotation with registrant’s mark. Although we note that the encyclopedia listing for “Saint Bernard” indicates that this breed of working dog is Ser. Nos. 77450085; 77450479; and 77450483 12 recognized for its work in the Swiss Alps, consumers are more likely to associate applicant’s Saint Bernard design simply with a breed of dog known for being courageous and helpful to humans. In sum, when the marks are considered in their entireties, they are significantly different in sound (to the extent that applicant’s St. Bernard dog design will be verbalized), appearance, meaning and overall commercial impression. These differences are significant enough that, even when identical goods are sold under the marks, consumers are not likely to be confused. Decision: The refusal to register in each application is reversed.