Retry LLC

Trademark Trial and Appeal BoardJul 27, 2016

No. 86125262 (T.T.A.B. Jul. 27, 2016)

This Opinion is not a Precedent of the TTAB Mailed: July 27, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Retry LLC _____ Serial No. 86125262 _____ Mark I. Koffsky of Koffsky Schwalb LLC, for Retry LLC. Josette M. Beverly, Trademark Examining Attorney, Law Office 115, John Lincoski, Managing Attorney. _____ Before Cataldo, Bergsman and Kuczma, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Retry LLC (“Applicant”) seeks registration on the Principal Register of the mark shown below for the following goods and services: Serial No. 86125262 - 2 - Computer software and computer software applications for use with mobile, tablet and handheld computers and cellular telephones for use in locating, reviewing, comparing, purchasing, ordering and providing information on general merchandise and consumer products via an online retail store; downloadable computer software and computer software applications for use with mobile, tablet and handheld computers and cellular telephones for use in the retrieval of general merchandise and consumer product data from third-party websites, downloadable computer software and computer software applications for use with mobile, tablet and handheld computers and cellular telephones for use in gaining access to and interface with third-party e-commerce tools and instructional, in International Class 9; and Online retail store portal services featuring a wide variety of general merchandise and consumer products; computerized online ordering featuring a wide variety of general merchandise and consumer products; providing consumer product information, product reviews and product comparisons via the Internet or other communications networks; providing an online commercial information directory on a wide variety of general merchandise and consumer products; providing a searchable on-line advertising guide featuring the goods and services of other online vendors; online classified advertising services; dissemination of advertising for others via an online electronic communications network, in International Class 35.1 The Trademark Examining Attorney has 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 so resembles the registered mark show below 1 Application Serial No. 86125262 was filed on November 21, 2013, under Section 1(b) of the Trademark Act of 1946, 15 U.S.C. §1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. Serial No. 86125262 - 3 - for the services set forth below as to be likely to cause confusion. Internet consumer comparison shopping services; providing ratings and reviews of businesses and consumer products and shopping store services for use by consumers; providing databases relating to consumer products and merchant business directory information; infomediary services, namely, facilitating transactions between buyers and sellers through operating an on-line marketplace for sellers of goods and/or services that provides buyers with information about sellers' goods and/or services; providing a website featuring links to sellers' websites through an online marketplace, in International Class 35.2 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See 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) 2 Registration No. 3020506, registered November 29, 2005; renewed. Serial No. 86125262 - 4 - goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A. The similarity or dissimilarity and nature of the goods and services and established, likely-to-continue channels of trade. 1. The services are in part identical. 3 A comparison of the services is set forth the table below illustrating that the services are in part identical or closely related: Applicant’s services Services in the registered mark Online retail store portal services featuring a wide variety of general merchandise and consumer products providing databases relating to consumer products and merchant business directory information; infomediary services, namely, facilitating transactions between buyers and sellers through operating an on-line marketplace for sellers of goods and/or services that provides buyers with information about sellers' goods and/or services; providing a website featuring links to sellers' websites through an online marketplace 3 During the prosecution of the application and appeal, Applicant did not present any arguments regarding the similarity or dissimilarity and nature of the goods and services. Serial No. 86125262 - 5 - Applicant’s services Services in the registered mark computerized online ordering featuring a wide variety of general merchandise and consumer products providing databases relating to consumer products and merchant business directory information; infomediary services, namely, facilitating transactions between buyers and sellers through operating an on-line marketplace for sellers of goods and/or services that provides buyers with information about sellers' goods and/or services; providing a website featuring links to sellers' websites through an online marketplace providing consumer product information, product reviews and product comparisons via the Internet or other communications networks Internet consumer comparison shopping services; providing ratings and reviews of businesses and consumer products and shopping store services for use by consumers; providing databases relating to consumer products and merchant business directory information; infomediary services, namely, facilitating transactions between buyers and sellers through operating an on-line marketplace for sellers of goods and/or services that provides buyers with information about sellers' goods and/or services Serial No. 86125262 - 6 - Applicant’s services Services in the registered mark providing an online commercial information directory on a wide variety of general merchandise and consumer products Internet consumer comparison shopping services; providing ratings and reviews of businesses and consumer products and shopping store services for use by consumers; providing databases relating to consumer products and merchant business directory information; infomediary services, namely, facilitating transactions between buyers and sellers through operating an on-line marketplace for sellers of goods and/or services that provides buyers with information about sellers' goods and/or services providing a searchable on-line advertising guide featuring the goods and services of other online vendors Internet consumer comparison shopping services; providing ratings and reviews of businesses and consumer products and shopping store services for use by consumers; providing databases relating to consumer products and merchant business directory information; infomediary services, namely, facilitating transactions between buyers and sellers through operating an on-line marketplace for sellers of goods and/or services that provides buyers with information about sellers' goods and/or services Serial No. 86125262 - 7 - Applicant’s services Services in the registered mark online classified advertising services; providing databases relating to consumer products and merchant business directory information; infomediary services, namely, facilitating transactions between buyers and sellers through operating an on-line marketplace for sellers of goods and/or services that provides buyers with information about sellers' goods and/or services; dissemination of advertising for others via an online electronic communications network infomediary services, namely, facilitating transactions between buyers and sellers through operating an on-line marketplace for sellers of goods and/or services that provides buyers with information about sellers' goods and/or services; Because the services described in the application and the cited registration are in part identical, we must presume that the channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); 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); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Serial No. 86125262 - 8 - 2. Applicant’s goods and Registrant’s services are related. Applicant is also seeking to register its mark for software used in connection with shopping, advertising and selling goods and services. To show that Applicant’s goods and Registrant’s services are related, the Trademark Examining Attorney submitted copies of use-based, third-party registrations for both software products and services using the software products. Third-party registrations based on use in commerce that individually cover a number of different goods and services may have probative value to the extent that they serve to suggest that the listed goods and services are of a type that may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The registrations, with relevant portions of the identifications, are listed below. Mark Reg. No. Goods/Services MYSCORECARD 4043054 Downloadable reports featuring information on retail transactions, consumer information, and consumer trends; Provision of marketing reports featuring information on retail transactions, consumer information, and consumer trends Serial No. 86125262 - 9 - Mark Reg. No. Goods/Services EAT WELL TOGETHER 4365154 Downloadable software in the nature of an application for mobile computer and communication devices that searches for and delivers to users information, discounts, coupons, ratings, reviews, contact information, location information, recommendations and referrals concerning the products and services of others; Providing an interactive website featuring business and consumer information and users posts regarding such information, namely, business and consumer information, discounts, coupons, ratings, reviews, contact information, location information, recommendations and referrals regarding the products and services of others. HYPECYCLE 4298782 Downloadable computer software for patrons of retail services to evaluate retail establishments that provide those services; Advertising and promotional services; providing consumer information services for products, services, events, activities, facilities and locations RUBY LANE 4323333 Downloadable electronic newsletters in the field of online retail sales; Dissemination of advertising for others via an on-line electronic communications network; online retail store services; providing a searchable on-line advertising guide featuring the goods and services of other on-line vendors Serial No. 86125262 - 10 - Mark Reg. No. Goods/Services 4339364 Computer software for use in obtaining information about retailers and the goods and services of others, promoting the sale of goods and services of others; computer software for use in managing consumer preference information; computer software for use in storing data relating to consumer preference patterns and personal, social and recreational interest of others; computer software for us in advertising, promotion, marketing, and sales by gather consumers preferences on the goods and services of others; computer software for use in recommending goods, services and other users based on similarity of tastes; Providing consumer information about retailers and the goods and services of others via a global computer network, namely, providing commercial information and advice for consumers; promoting the goods and services of others via a global computer network; providing consumer information about retailers and their goods or services via a global computer network URBANDADDY 4414449 Downloadable software in the nature of a mobile application for providing consumer information and making referrals; Advertising and promotional services; online retail store services Serial No. 86125262 - 11 - Mark Reg. No. Goods/Services 4285390 Computer-application software for mobile devices in the nature of mobile phones and table computers, namely, software allowing consumers to search for post ratings, reviews, rankings and recommendations relating to third-party business organizations and service providers and to share such information with others; Providing commercial information and advice for consumers about the goods and services of others via a global computer network; providing recommendations of service providers to consumers for commercial purposes In view of the foregoing, we find that Applicant’s services and Registrant’s goods are related. Although there is no evidence expressly comparing the channels of trade, it does not take a leap of reason to understand that a company that has developed a software application in the field of shopping, advertising and selling goods and services would also market services utilizing that software application. Accordingly, we find that Applicant’s services and Registrant’s goods move in the same channels of trade or they are, at least, sold to the same class of consumers. B. The strength of the mark in the cited registration. Applicant argues that Registrant’s shopping cart design mark is “extremely weak in connection with retail store services and [is] entitled to a narrow scope of protection based on extensive third party use.”4 Applicant asserts that there are at least 40 4 Applicant’s Brief, p. 3 (4 TTABVUE 7). Serial No. 86125262 - 12 - marks that include a shopping cart on the Principal Register. The marks displayed below are the marks closest in appearance to the mark in the cited registration: 1. Registration No. 4583264 2. Registration No. 3496632 3. Registration No. 4254998 4. Registration No. 3017766 Serial No. 86125262 - 13 - In analyzing the similarity or dissimilarity of the marks, we keep in mind that the use of a shopping cart design is not unique in the fields of shopping, advertising and selling goods and services and that many shopping cart design marks feature the illusion of movement, presumably to create the commercial impression that shopping experience is fast and easy. C. The similarity or dissimilarity of the marks. We now turn to the du Pont likelihood of confusion 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., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In comparing the marks, we are mindful that where, as here, the services are in part identical, and the goods and services are closely related, degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods and services. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing- Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Insofar as a comparison of the shopping cart design marks is concerned, the similarity of the marks must be decided primarily on the basis of visual similarity. In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990). In this situation, consideration must be given to the fact that the marks usually will not be viewed Serial No. 86125262 - 14 - side-by-side in the marketplace. “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, 101 USPQ2d at 1721. See also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). 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 Industries, 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 goods and services at issue are software applications in the field of shopping, advertising and selling goods and services, and services in the field of shopping, advertising and selling goods and services, the average customer is an ordinary consumer. The marks at issue are set forth below: Applicant’s Mark Registered Mark Serial No. 86125262 - 15 - The marks are remarkably similar because they both feature shopping carts on a slight angle with flames coming out of the back of the cart creating the commercial impression of a jet propelled shopping cart. Thus, the marks are highly similar in appearance and connotation. Because both marks consist entirely of a jet propelled shopping cart design, neither includes a word component that would be articulated. Although there are specific differences between the designs (e.g., Applicant’s background design and the details of the shopping carts), the similarities outweigh the differences. Without question, Applicant’s mark and the mark in the cited registration engender very similar commercial impressions. D. Balancing the factors. Because the marks are similar, the services are in part identical and there is a presumption that the services move in the same channels of trade, and Applicant’s goods and Registrant’s services are related and move in the same channels of trade, we find that Applicant’s shopping cart design mark is likely to cause confusion with the registered shopping cart design mark. Decision: The refusal to register Applicant’s mark is affirmed.