Refael Yitzhaki

Trademark Trial and Appeal BoardApr 16, 2018

No. 86910020 (T.T.A.B. Apr. 16, 2018)

This Opinion is not a Precedent of the TTAB Mailed: April 16, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Refael Yitzhaki _____ Serial No. 86910020 _____ Stephen T. Scherrer of Scherrer Patent & Trademark Law PC, for Refael Yitzhaki. Samir Ramesh-Patel, Trademark Examining Attorney, Law Office 106, Mary I. Sparrow, Managing Attorney. _____ Before Kuhlke, Bergsman and Masiello, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Refael Yitzhaki (“Applicant”) seeks registration on the Principal Register of the mark THE SURPRISE MYSTERY BOX in standard characters for services ultimately identified as “On-line retail store services featuring a wide variety of consumer goods of others, but not a monthly subscription service that provides anglers with fishing equipment, namely fishing lures; On-line retail store services featuring general consumer merchandise and a wide variety [sic] general consumer goods of others, but not a monthly subscription services [sic] that provides anglers Serial No. 86910020 - 2 - with fishing equipment, namely fishing lures,” in International Class 35.1 The word “BOX” is disclaimed. The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used in connection with the identified goods, so resembles the mark THE OC MYSTERY BOX in standard characters, registered on the Principal Register for “Retail variety stores,” in International Class 35,2 as to be likely to cause confusion, mistake or deception. When the refusal was made final, Applicant appealed and briefs were filed. We affirm the refusal to register. I. Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Even within the du Pont list, only factors that are “relevant and of record” need be considered. M2 1 Application Serial No. 86910020 was filed on Feb. 17, 2016, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. 2 Registration No. 4500494, issued on March 25, 2014. The term “OC” is disclaimed. An additional refusal under Section 2(d) based on Registration Nos. 4817354 and 4817355 was apparently obviated by the amendment to Applicant’s identification of services and is not an issue on appeal. Dec. 9, 2016 Final Office Action. All citations to the prosecution history for the application are to the TSDR (Trademark Status and Document Retrieval) database. Serial No. 86910020 - 3 - Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); 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 Services/Channels of Trade/Consumers With regard to the services, channels of trade and classes of consumers, we must make our determinations based on the services as they are identified in the application and cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may Serial No. 86910020 - 4 - perceive [the respective goods or services of the parties] as related enough to cause confusion about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d at 1004). “Variety store” is defined as “a retail store that carries a wide variety of merchandise especially of low unit value.”3 Registrant’s “Retail variety stores” encompass Applicant’s “On-line retail store services featuring a wide variety of consumer goods of others, but not a monthly subscription service that provides anglers with fishing equipment, namely fishing lures; On-line retail store services featuring general consumer merchandise and a wide variety general consumer goods of others, but not a monthly subscription services that provides anglers with fishing equipment, namely fishing lures” and, as such, the services are legally identical. See, e.g., In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). Considering the channels of trade and classes of consumers, because the services are legally identical and there are no limitations as to channels of trade or classes of purchasers in either the application or cited registration, we must presume that 3 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 2000). The Examining Attorney’s request for judicial notice of the definition of “variety store” is granted. 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) (Board may take judicial notice of dictionary definitions); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006) (judicial notice of online dictionaries that exist in printed format or regular fixed editions). Serial No. 86910020 - 5 - Applicant’s and Registrant’s services travel in the same ordinary trade channels and will be offered to the same potential consumers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). Applicant presented no argument on these factors. In view of the above, these du Pont factors favor a finding of likelihood of confusion. B. Similarity/Dissimilarity of the Marks Under this factor, we compare Applicant’s and Registrant’s marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the services are “retail variety store services” and Serial No. 86910020 - 6 - “online retail store services featuring general consumer merchandise,” the average customer is an ordinary consumer. When the services are identical or legally identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010); In re Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB 2007). Applicant’s mark, THE SURPRISE MYSTERY BOX, and Registrant’s mark, THE OC MYSTERY BOX, share wording presented in a similar structure. Applicant’s additional word, SURPRISE, underscores the connotation and commercial impression of the word MYSTERY4 and Registrant’s additional term, OC, describes a geographic location of its services; the term OC referring to Orange County, CA, Registrant’s location.5 The first part in a mark may have more source-identifying significance as it is “often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak 4 The definitions for SURPRISE and MYSTERY are respectively “an unexpected … thing” and “a thing whose … nature is … unknown.” Oxford Living Dictionary (https://en.oxforddictionaries.com) Dec. 9, 2016 Office Action at 4-8. 5 Registrant’s address is in Mission Viejo, California. June 6, 2016 Office Action at 2. We take judicial notice that Mission Viejo, California is in Orange County, California. In re Morinaga Nyuguo Kabushiki Kaisha, 120 USPQ2d 1738, 1744 n.4 (TTAB 2016) (Board took judicial notice of the locations of Puyallup, Washington and Mount Rainer). Serial No. 86910020 - 7 - Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1987) (KIDWIPES confusingly similar to KID STUFF). See also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692 (“The presence of this strong distinctive term as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of the word ROYALE.”). However, here, where the beginning of the marks either conveys the same connotation and commercial impression of the common element MYSTERY BOX, or simply provides information as to the location of the source, we find that the differing terms OC and SURPRISE are insufficient to distinguish the marks. We recognize that the word BOX is disclaimed in Applicant’s mark; however, the addition of the word BOX to both marks right after MYSTERY creates a very similar appearance and commercial impression. Even if there is no particularly dominant component of either mark, we find that the marks, despite their differences, are similar in meaning and overall commercial impression. Applicant argues that the Examining Attorney’s analysis improperly dissects the marks and thereby ignores the differences. We find no error in the Examining Attorney’s analysis. It is well-settled that although we consider the marks in their entireties “[t]here is nothing improper in stating that, for rational reasons, more or 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.” In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985). As discussed above, OC is geographically descriptive and disclaimed in Registrant’s mark. Although there Serial No. 86910020 - 8 - is no mechanical test to select a “dominant” element of a compound word mark, consumers would be more likely to perceive a fanciful or arbitrary term, rather than a descriptive or generic term, as the source-indicating feature of the mark. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming TTAB’s finding that “DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE). In addition, the word SURPRISE in Applicant’s mark serves to emphasize the meaning and commercial impression of the common word MYSTERY. We are mindful that these words are merely part of a phrase in each mark and “that the message of a whole phrase may well not be adequately captured by a dissection and recombination.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340-41, 115 USPQ2d 1671, 1676 (Fed. Cir. 2015). However, if two marks for legally identical services share identical or similar dominant features and the marks, when viewed in their entireties, create similar overall commercial impressions, then confusion is likely. See In re Denisi, 225 USPQ 624, 624 (TTAB 1985) (“[I]f the dominant portion of both marks is the same, then confusion may be likely notwithstanding peripheral differences.”). In this case, the peripheral differences fail to distinguish the marks. When comparing marks, “[t]he 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 [consumers] who encounter the marks would be likely to assume a connection between the parties.” In re U.S. Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1795 (TTAB 2017) (citing Coach Servs., Inc. v. Serial No. 86910020 - 9 - Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). Here, consumers would more likely remember the MYSTERY BOX portion of the marks and to the extent they recall OC or SURPRISE, they could ascribe that difference to being variations from the same source. We find the marks’ similarities in appearance, sound, connotation and commercial impression outweigh the dissimilarities. This du Pont factor weighs in favor of a likelihood of confusion. II. Balancing of Factors Considering that the services, channels of trade and consumers are legally identical, and the marks are similar, we find that confusion is likely. Decision: The refusal to register Applicant’s mark is affirmed.