Ron Jon Surf Shop of Fla., Inc.

Trademark Trial and Appeal BoardNov 27, 2012

No. 77411069 (T.T.A.B. Nov. 27, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: November 27, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Ron Jon Surf Shop of Fla., Inc. _____ Serial No. 77411069 _____ Lisa N. Kaufman of Law Office of Lisa N. Kaufman PA for Ron Jon Surf Shop of Fla., Inc. Wendy B. Goodman, Trademark Examining Attorney, Law Office 109 (Dan Vavonese, Managing Attorney). _____ Before Kuhlke, Shaw and Hightower, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Applicant, Ron Jon Surf Shop Fla., Inc., filed an application to register on the Principal Register the mark THE STOKED1 in standard characters for goods and services ultimately identified as: Beach bags, tote bags, back packs, cinch sacks, ruck sacks, and book bags for sale at the owner’s museum stores which are devoted to the board sports industry, both in the museum itself and online, in International Class 18; 1 Application Serial No. 77411069, filed on March 3, 2008, based on an allegation of a bona fide intention to use the mark in commerce, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 77411069 2 Men’s, women’s and children’s clothing and sportswear namely, sweatshirts, sweat pants, sweat shorts, shirts, bathing suits, dresses, blouses, skirts, beach cover-ups, sandals, socks, headbands, caps, hats, visors, wet suits, jackets and ponchos for sale at the owner’s museum stores which are devoted to the board sports industry, both in the museum itself and online, in International Class 25; and Retail gift shop services and on-line retail gift shop services provided at the owner’s board sports museum stores, featuring: clothing and accessories; beach and surf gear; sporting and recreational goods, equipment and accessories; toys and games; household goods; stationery products, greeting cards, postcards, note cards, books and publications, posters, calendars, planners, journals; and novelty and souvenir items and gifts, in International Class 35.2 Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified goods and services, so resembles the following registered marks: STOKED in typed form for “sportswear, namely, t-shirts, hats,” in International Class 25, owned by Tim Wingard D/B/A Stoked Sportswear;3 and STOKED in standard characters for “lipstick cases and holders” in International Class 3, “ankle bracelets, bracelets, charms, chokers, earrings, identification bracelets, jewelry chains, necklaces, pendants, rings, watches” in International Class 14; “all-purpose carrying bags, backpacks, beach bags, change purses, clutch purses, daypacks, duffel bags, evening handbags, fanny packs, handbags, key cases, make-up bags sold empty, multi-purpose purses, overnight bags and cases, pocketbooks, purses, rucksacks, satchels, shoulder bags, tote bags, waist packs” in International Class 18, owned by Revelations Perfume and Cosmetics, Inc.4 2 The application also includes goods and services in International Classes 6, 9 and 41, which are not subject to the refusal. 3 Registration No. 2822074, issued on March 16, 2004, Sections 8 and 15 declaration accepted and acknowledged. The following goods have been deleted from the registration: jackets, swim trunks, pants and shorts. These goods have not been considered in the likelihood of confusion analysis. 4 Registration No. 3545367 issued on December 9, 2008. Serial No. 77411069 3 as to be likely to cause confusion, mistake or deception. When the refusal was made final, applicant appealed and requested reconsideration. After the examining attorney denied the requests for reconsideration, the appeal was resumed. 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). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We begin with the du Pont factor of the relatedness of the goods and services. We base our evaluation on the goods and services as they are identified in the registrations and application. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled that it is not necessary that the respective goods and services be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis. That is, the issue is not whether consumers would confuse the goods and services themselves, but rather whether they would be confused as to the source of the goods and services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods and services need only be sufficiently Serial No. 77411069 4 related that consumers would be likely to assume, upon encountering the goods and services under similar marks, that the goods and services originate from, are sponsored or authorized by, or are otherwise connected to the same source. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). Applicant did not present argument in its brief regarding this factor. Applicant’s “hats” are identical to the “hats” in Registration No. 2822074 and applicant’s “sweatshirts” and “shirts” are closely related to the “t-shirts” in Registration No. 2822074. Applicant’s “beach bags, tote bags, back packs” and “ruck sacks” are identical to the “back packs, beach bags” and “rucksacks” in Registration No. 3545367. It is sufficient for a finding of likelihood of confusion if the relatedness is established for any item encompassed by the identification of goods within a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981). In addition, the examining attorney has submitted several third-party use-based registrations showing that numerous entities have adopted a single mark for the non-identical goods identified in applicant’s application and the non-identical goods in registrants’ registrations. See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) (third-party registrations serve to suggest that the goods and/or services listed therein are of a kind that may emanate from a single source). Serial No. 77411069 5 With regard to applicant’s retail services, it features goods included in both cited registrations. It is well established that goods and services may be related. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGGS for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture). Further, the examining attorney submitted copies of third-party registrations that include applicant’s services and registrants’ goods. Albert Trostel, 29 USPQ2d at 1785-86. See e.g., Reg. No. 3706961 for the mark SILVER SLIPPER and Design for, inter alia, tote bags, beach bags, hats, t- shirts and retail stores featuring such goods; Reg. No. 3486249 for the mark 5F for, inter alia, tote bags, pants, shirts, hats and retail stores featuring such goods. In view thereof, we find the goods and services to be, in part, identical and otherwise closely related. With regard to the channels of trade, applicant argues that they are distinct because: Applicant has limited the sales of its products bearing THE STOKED trademark to its own museum which will also use the same trademark THE STOKED. Obviously, Applicant’s products branded with the mark THE STOKED are intended to be promotional items for the museum itself. The fact that third parties may manufacture these products or that other items may be sold in the museum is irrelevant to the Appeal. App. Br. p. 18. However, because the goods are legally identical and there are no limitations in the identifications of the cited registrations, we must presume that they are offered in the same channels of trade to the same classes of customers. Hewlett- Serial No. 77411069 6 Packard Co., 62 USPQ2d 1001. Moreover, the examining attorney has demonstrated that museum stores are included in the ordinary channels of trade for registrants’ goods. Further, the record shows that consumers are accustomed to seeing museum branded items for sale in other retail environments (e.g., Barnes & Nobel, Target and Amazon.com) and goods other than promotional items for the museum sold at museum online stores (e.g., The Phillips Collection, The Art Institute of Chicago). Thus, the limitation to the channels of trade in applicant’s identification does not obviate a likelihood of confusion. We turn then to the du Pont factor of the similarities and dissimilarities between applicant’s mark THE STOKED and registrants’ respective STOKED marks. We analyze “the 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. Further, where the goods or services are legally identical, as with the hats and bags, the degree of similarity between the marks necessary to support a determination that confusion is likely declines. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010). Applicant’s mark THE STOKED incorporates the entirety of the cited STOKED marks. Further, we find that the dominant element in applicant’s mark is the word STOKED. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (It is well settled that one feature of a mark may be more Serial No. 77411069 7 significant than another, and it is not improper to give more weight to this dominant feature when evaluating the similarities of the marks.) Applicant argues that: Use of the article “THE” in front of the word “STOKED” creates a memorable trademark. It is memorable because it is a unique way to use the term “Stoked”, which is an adjective or perhaps even a verb. In any circumstance, the ordinary use of the word “stoked” is not as a noun. By placing the word “THE” preceding the word “STOKED”, the mark becomes a noun and is therefore transformed to a name which is memorable in that it is an unusual combination of a grammatical article and a grammatical adjective or verb. … The use of the article “THE” as the first word of Applicant’s mark is not analogous to use of the article “THE” in front of a second word which is a noun. App. Br. p. 9. While there is some slight distinction engendered by the transformation of the adjective to a noun, it is not sufficient to dispel likelihood of confusion. The overall commercial impression remains the same, based on the word STOKED whether perceived as an adjective or a noun. Further, applicant argues that in relation to its goods and services the mark THE STOKED references a surfing term. However, this meaning may also be attributed to the marks in the cited registrations inasmuch as their respective goods encompass all types, including board sports-related goods. Finally, applicant argues that the term STOKED is weak and entitled to a limited scope of protection. In support of this argument, applicant submitted third- party registrations that include the term STOKED in the mark and a few web pages from third-party websites where the term STOKED is used in connection with clothing and other items. Serial No. 77411069 8 As noted by the examining attorney, the third-party registrations are not probative on the factor of third-party use, because such registrations do not establish that the registered marks identified therein are in actual use in the marketplace or that consumers are accustomed to seeing them. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973). In addition, the examples given either are for different goods (e.g., Reg. No. 3619197 STOKED SKATEBOARDS for skateboards) or the marks include more distinguishing elements (e.g., Reg. No. 3682624 FOREVER STOKED for shirts). Finally, the fact that third-party registrations (including the two cited registrations) exist that include the word STOKED for arguably similar goods or services is not determinative. We are not bound by prior decisions of examining attorneys. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); and In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994). With regard to the examples of third-party use on websites, there is no evidence as to the extent of this use or consumer exposure. Finally, even if we considered the term STOKED to be weak in the context of these goods and services, in view of the legally identical goods, closely related services, and highly similar marks, the cited registrations would still be entitled to protection. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). The cases relied upon by applicant do not persuade us of a different result. For example, in In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977), In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987) and In re British Bulldog, Serial No. 77411069 9 Ltd., 224 USPQ 854 (TTAB 1984), the connotation and commercial impression of the marks were quite different in the context of the respective goods. Here, because there are no limitations in the identifications in the cited registrations, we must presume they encompass applicant’s type of goods, i.e., those related to board sports and thus would evoke the same connotation and commercial impression. We find that the marks would convey the same connotation with regard to the word STOKED and the additional word THE in applicant’s mark is not sufficient to distinguish them. In view thereof, we find the overall commercial impression to be similar. While there are differences in appearance and sound between the marks, we find that the similarities outweigh the dissimilarities. In conclusion, we find that because the goods and services are identical and otherwise closely related and the marks are highly similar, confusion is likely between applicant’s mark THE STOKED and the mark STOKED in the cited registrations. Decision: The refusal to register based on a likelihood of confusion under Section 2(d) of the Trademark Act is affirmed. The application will proceed as to the goods and services in International Classes 6, 9 and 41 only.