Poly Gel, LLC

Trademark Trial and Appeal BoardMar 30, 2011

No. 77784308 (T.T.A.B. Mar. 30, 2011)

Mailed: March 30, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ___________ Trademark Trial and Appeal Board ___________ In re Poly Gel, LLC ___________ Serial No. 77784308 ___________ Edwin D. Schindler, Esq. for Poly Gel, LLC. Leigh Caroline Case, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). ____________ Before Walters, Zervas and Wolfson, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Poly Gel, LLC has filed an application to register the standard character mark THERMOTECC on the Principal Register for “orthotic inserts, namely, moldable foot supports, moldable arch supports and moldable heel supports; moldable shells for foot support,” in International Class 10.1 The examining attorney has issued a final refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. 1 Serial No. 77784308, filed July 18, 2009, based on an allegation of a bona fide intention to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77784308 2 1052(d), on the ground that applicant’s mark so resembles the standard character mark THERMOTECH, previously registered for “clothing, namely, socks,” in International Class 25,”2 that, if used on or in connection with applicant’s goods, it would be likely to cause confusion or mistake or to deceive. Applicant has appealed. Both applicant and the examining attorney have filed briefs. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper 2 Registration No. 3673580, issued August 25, 2009. The registration is owned by Retail Concepts, Inc. Serial No. 77784308 3 Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited therein. The Marks We turn first to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). The test 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 impressions that confusion as to the source of the goods or services offered under the respective marks is likely to result. H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715 (TTAB 2008). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Serial No. 77784308 4 Applicant’s mark, THERMOTECC, and the registered mark, THERMOTECH, are substantially similar in appearance, with the final letter of each mark as the only difference. We take judicial notice of the usual pronunciation of “tech” noted in Merriam-Webster’s Collegiate Dictionary (11th ed. 2003) as “tek.” The TECC portion of applicant’s mark is likely to have the identical pronunciation and, thus, the marks sound the same. Applicant argues that the different final letter in its mark is sufficient to distinguish it from the registered mark because both portions of the registered mark, THERMO and TECH, are commonly used by many entities in numerous industries and, thus, the registered mark is extremely weak. Applicant submitted absolutely no evidence in support of this contention, except to request that we take judicial notice “that TECH is used as a suffix as part of trademarks and service marks throughout the economy to convey the impression of new or advanced technology of a product or service in a given field.” (Brief, p. 2.) This is not the type of fact that the Board will judicially notice. We will judicially note the definition of “tech” as, inter alia, “n. 2. technology; 3. abbr. a. technical; technically; b. technological.” (Id.) While “tech” may suggest that technology has been used to formulate registrant’s socks, there is no indication in the record that this portion of Serial No. 77784308 5 the registered mark is more than slightly suggestive in connection with socks. We certainly cannot conclude that THERMOTECH is a weak mark in connection with the identified goods. When we compare the marks in their entireties, we find that they are essentially identical in sound, and substantially similar in appearance and commercial impression. The different final letter in applicant’s mark is insufficient to distinguish these marks. This du Pont factor favors a finding of likelihood of confusion. The Goods Turning to consider the goods involved in this case, we note that the question of likelihood of confusion must be determined based on an analysis of the goods or services recited in applicant’s application vis-à-vis the goods or services recited in the registration, rather than what the evidence shows the goods or services actually are. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). Further, it is a general rule that goods or services need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough Serial No. 77784308 6 that goods or services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties’ goods or services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited therein; and Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002). The examining attorney has submitted excerpts from several websites, as follows3: Footsmart.com – online store – shows both orthotics and socks that are identified by different third-party brands. Ortho-net.com/foot – online store - brands include Silipos and Bauerfeind for insoles and heel cushions; Lynco for orthotics; Silipos for socks, foot covers and gel air insoles. Clearpointdirect.com – online store – shows orthotic insoles and pressure free socks. No third-party trademarks are used. American-medical-supply.com – online store – shows diabetic insoles; anti-embolism knee high stockings; diabetic socks; men’s support socks; orthotic insoles; slipper socks. No third-party trademarks are used. 3 The examining attorney also references, in her office action of April 27, 2010, article excerpts downloaded from the Lexis/Nexis database. However, these excerpts are not in the record and, thus, have not been considered. Serial No. 77784308 7 The evidence from Footsmart.com is not probative, as there is no overlap in the third-party trademarks shown for socks versus orthotics. The mere fact that the website sells both items is not probative that such items may be identified by the same marks. The Orthonet.com website shows several brands of orthotics and socks, with one brand, Silipos, used on both orthotics and socks. The other two websites show the items, socks and orthotics, identified only by their generic names, although some of these items are listed on the same pages. Thus, these two websites are inconclusive evidence. The examining attorney has also made of record five use-based third-party registrations which show that various entities have adopted a single mark for, inter alia, both orthotics and socks. 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 are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). Applicant contends that this evidence is insufficient to establish that the goods are related. However, we find that the one website showing use of the same mark in connection with socks and orthotics, along with the five third-party registrations is sufficient evidence to conclude Serial No. 77784308 8 that the goods are sufficiently related that, if identified by confusingly similar marks, confusion as to source is likely. Thus, this du Pont factor weighs in favor of likelihood of confusion. Channels of Trade and Purchasers Based on the evidence showing that applicant’s and registrant’s goods are sold via the same websites, we conclude that there is at least an overlap in trade channels. Further, inasmuch as the identifications of goods in both the involved application and the cited registration are not limited to any specific channels of trade, the goods would be offered in all ordinary trade channels for these goods and to all usual classes of purchasers. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). In view of the nature of the goods, we conclude that the class of purchasers encompasses the general public, which includes purchasers who will exercise varying degrees of care in purchasing these items. In view of the overlap in trade channels and classes of purchasers, we find that these du Pont factors also weigh in favor of a finding of likelihood of confusion. When we consider the record and the relevant likelihood of confusion factors, and all of applicant's arguments relating thereto, including those arguments not specifically addressed herein, we conclude that in view of the Serial No. 77784308 9 substantial similarity in the commercial impressions of applicant’s mark, THERMOTECC, and registrant’s mark, THERMOTECH, their contemporaneous use on the goods involved in this case is likely to cause confusion as to the source or sponsorship of such goods. Moreover, to the extent that we have any doubts as to the correctness of this conclusion, we resolve such doubts against applicant and in favor of registrant. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992); Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004); and In re Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber- Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973). Decision: The refusal under Section 2(d) of the Act is affirmed.