Rydeen North America Inc.Download PDFTrademark Trial and Appeal BoardJan 16, 2014No. 85573597 (T.T.A.B. Jan. 16, 2014) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: January 16, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Rydeen North America Inc. _____ Serial No. 85573597 _____ Irving Keschner for Rydeen North America Inc. Sharon A. Meier, Trademark Examining Attorney, Law Office 112 (Angela Wilson, Managing Attorney). _____ Before Bucher, Wellington, and Masiello, Administrative Trademark Judges. Opinion by Masiello, Administrative Trademark Judge: Rydeen North America Inc. filed an application to register on the Principal Register the mark GCOM in standard character form for the following goods: Audio amplifiers; Audio equipment for vehicles, namely, loud speakers for automotive audio systems; Audio equipment for vehicles, namely, stereos, speakers, amplifiers, equalizers, crossovers and speaker housings; Audio equipment for vehicles, namely, subwoofers; Car navigation computers; CD players; Cell phones; Computers; Digital audio and video recorders and players; Digital cameras; Digital video recorders; DVD players; DVD recorders; Electronic navigational and positioning apparatus and instruments; GPS navigation device; Navigation apparatus for vehicles; Navigation apparatus for vehicles in the nature of on-board computers; Serial No. 85573597 2 Navigational instruments for vehicles; Radio receivers; Satellite receivers, in International Class 9.1 The trademark examining attorney refused registration under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in connection with applicant’s goods, so resembles the mark G.COM as to be likely to cause confusion, or to cause mistake, or to deceive. The cited mark is registered in standard character form for the following services: On-line wholesale and retail store services featuring general consumer merchandise, namely, clothing, shoes, bath and body products, jewelry, electronics, cookware, housewares, appliances, furniture, linens, pillows, decorative accessories, office furniture and accessories, toys, games, sporting goods, tools, outdoor lawn and garden equipment, pet supplies and paper products, in International Class 35.2 When the refusal was made final, applicant appealed. 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 issue of likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). 1 Application Serial No. 85573597, filed under Trademark Act § 1(b), 15 U.S.C. § 1051(b), on March 19, 2012. 2 Reg. No. 3690644, issued on September 29, 2009. Serial No. 85573597 3 1. The marks at issue. We first consider the similarity or dissimilarity of the marks in appearance, sound, meaning, and overall commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). We must compare the marks at issue in their entireties. However, there 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 a consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant acknowledges that “the marks have the same lettering,” but argues that the “dot” in the cited registered mark “breaks up the ‘G’ and the COM, providing Registrant’s mark with a different look.”3 However, we must be mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977). Rather, the proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012). Slight differences in marks do not normally create dissimilar marks. Considering that the “dot” symbol is graphically so subtle ( . ) and taking into account the normal fallibility of human memory over time, the “dot” symbol may easily be overlooked or forgotten by a customer who has seen it but retains only a general impression of it. Accordingly, we find the two marks to be highly similar 3 Applicant’s brief at 5-6. Serial N in appe 1985). W the cite suggest pronunc that the English 2012) (“ pronoun Belgrad Corp., 6 would n the sim same. register Hyper S re Mart Cir. 198 R that its 4 Id. o. 855735 arance. S ith respec d register a suitab iation of t re is no c word. In r [T]here is ce a mark e Shoe, 41 8 USPQ2 ot vocalize ilar spellin To the ex ed mark, w hoppes (O in's Famou 4). egarding t mark “pr 97 ee In re G t to the p ed mark le pronun he registe orrect wa e Viterra no correc different 1 F.2d 13 d 1195 (TT the “dot” g of the t tent that e resolve hio), Inc., s Pastry S he meanin esents a c reat Lake honetic as would be ciation fo red mark y to prono Inc., 671 F t pronunc ly than in 52, 162 U AB 2003) symbol in wo marks there is that doubt 837 F.2d 8 hoppe, Inc g or conn ommercial 4 s Canning pects of th pronounce r applican is certainl unce a tr .3d 1358, iation of a tended by SPQ 227 . It is at the regist , the mark any doub , as we mu 40, 6 USP ., 748 F.2d otation of impressio , Inc., 227 e marks, d “G DO t’s mark y plausible ademark 101 USPQ tradema the brand (CCPA 19 least like ered mark s would l t as to th st, in favo Q2d 1025 1565, 223 the two m n related USPQ 48 applicant T COM”4 . Applica . Howeve that is no 2d 1905, 1 rk, and co owner.”); 69) and I ly that so . In that c ikely be p e pronun r of the re (Fed. Cir USPQ 12 arks, appl to its elec 3, 485 (T contends and does nt’s prop r, it is se t a recogn 912 (Fed. nsumers see also I n re Micr me custom ase, in vie ronounced ciation of gistrant. I . 1988); an 89, 1290 ( icant cont tronic cla TAB that not osed ttled ized Cir. may n re osoft ers w of the the n re d In Fed. ends ss of Serial No. 85573597 5 goods,” while the registered mark “is for a global network.”5 While applicant’s comments on this point are not transparent, we interpret them to mean that the “COM” element of applicant’s mark may suggest the word “computer” or “communication” to the average customer. It might also suggest the word “company.” In the registered mark, the element “.COM” is likely to be perceived as the ubiquitous top-level domain indicator that is used in many internet addresses. While we appreciate the potential ambiguity inherent in the “COM” element of applicant’s mark, it is likely that, in the perception of some customers, it will be suggestive of the top-level domain “.COM,” even though there is no “dot.” To this extent, the marks would be perceived by some customers as having identical meaning or connotation. As before, we resolve any doubt as to the interpretation of the meaning of the mark in the registrant’s favor. In light of the foregoing, we find the two marks to be substantially similar in overall commercial impression: they are composed of the same four letters in the same order; they share one likely pronunciation; and their suggestive meaning to some customers would be the same. We find that the du Pont factor of the similarity or dissimilarity of the marks favors a finding of likelihood of confusion. 2. The goods and services at issue. We next consider the respective goods and services of applicant and registrant. Applicant points out that it produces goods, while the registered mark is for online wholesale and retail store services, and argues: 5 Id. at 6. Serial No. 85573597 6 Commerce regarding the online provision of services for general merchandise is clearly distinct from goods in any form, particularly the electronic components identified in the subject application (IC 009). No one would mistake electronic components (goods) for online wholesale or retail store (services), yet that would have to happen to find a likelihood of confusion.6 Applicant is mistaken on a number of points. First, the issue is not whether purchasers would confuse applicant’s goods for registrant’s services, but rather whether there is a likelihood of confusion as to the source of these goods and services. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Second, the fact that applicant’s goods are in Class 9 and registrant’s services are in Class 35 is irrelevant to our analysis. The classification of goods and services by the Patent and Trademark Office is a purely administrative determination that has no bearing on the issue of likelihood of confusion. Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771 (Fed. Cir. 1993). More importantly, the fact that applicant provides goods while registrant provides online stores does not, alone, indicate a lack of likelihood of confusion. It has often been recognized that likelihood of confusion may arise where confusingly similar marks are used on goods, on the one hand, and in connection with sales of such goods, on the other. See In re Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1640 (TTAB 2006). “Trademarks for goods find their principal use in connection with selling the goods” and accordingly marks for goods and marks for the service of selling such goods will have their impact on the purchasing public in 6 Id. at 7. Serial No. 85573597 7 the same marketplace. In re Hyper Shoppes, 6 USPQ2d at 1026. See also J. Thomas McCarthy, Trademarks and Unfair Competition (4th ed.) § 24:25. As the examining attorney points out, applicant’s goods consist of a variety of consumer electronic goods, while registrant’s services, as identified on the registration certificate, include “on-line wholesale and retail store services featuring … electronics.”7 In other words, registrant’s service is a trade channel through which goods similar to those of applicant travel, such that customers may be exposed to the marks of applicant and registrant in the same marketplace. The examining attorney, to support her argument that customers would be likely to mistakenly believe that a single business may be the source of electronics and of retail services that offer electronics, has submitted a number of use-based, third-party registrations,8 each of which relates to both electronics similar in type to those of applicant and online retail stores featuring such goods. Such third-party registrations that are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed goods and services 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). Among these registrations, we find most probative the registrations that relate both to electronic goods and to online retailers that, like registrant, offer not only electronics but also a wide variety of other kinds of goods. See Reg. Nos. 3287468 and 3957422. The examining attorney has also submitted 7 See examining attorney’s brief at 11. 8 Office action of June 29, 2012. Serial No. 85573597 8 evidence from the internet in the form of web pages for online retailers that use the same mark for their retail services and for their electronics products.9 We note in particular the website located at , on which the BROOKSTONE mark identifies retail services offering a wide variety of goods similar to those offered through registrant’s stores, such as electronics, bedroom accessories, pillows, bath and spa goods, housewares, cookware, furniture, toys and games, and pet supplies. The evidence also shows the mark BROOKSTONE as applied to a portable CD player (a type of goods included in applicant’s identification of goods) offered through the BROOKSTONE online retail store.10 Applicant, to further its argument, cites by analogy several cases that found that foods and restaurant services could be marketed under similar marks without confusion, unless evidence of “something more” were to indicate a connection between the product and the service.11 We see applicant’s analogy as very imperfect. A restaurant is quite different in nature from a “store” that features foods. Moreover, we see a substantially lesser distinction in nature between, on the one hand, the types of electronic goods that are brought to market by their manufacturers and the types of electronic goods that can be found in an online store; and, on the other hand, foods that are brought to market as goods by their producers and foods that are served ready-to-eat in a restaurant. This is illustrated by the evidence of record, which shows that online “stores” branded with a 9 Office action of November 6, 2012. 10 Id. at pp. 52-57. 11 Applicant’s brief at 7, citing In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003); and Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982). Serial No. 85573597 9 manufacturer’s mark are a common method for manufacturers of electronics to market their goods.12 In determining whether goods and services are related, it is not necessary that the goods and services be similar in nature or competitive in character to support a holding of likelihood of confusion; it is sufficient that the goods and services are related in some way, or that conditions surrounding their marketing are such, that they could be encountered by the same customers and that such customers would be likely, because of the similarities of the marks used with the goods and services, to mistakenly believe that they originate from or are in some way associated with the same producer. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); Schering Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978). For the purposes of our analysis in this case, we find that consumer electronics are sufficiently related to online wholesale and retail general merchandise stores that offer electronics such that if the store and the electronic product were marked with similar marks, customers would readily believe that they emanate from the same source. Accordingly, the du Pont factor relating to the similarity or dissimilarity of the goods and services at issue weighs in favor of a finding of likelihood of confusion. 12 See Office action of November 6, 2012, showing electronic products branded PANASONIC, APPLE, BROOKSTONE, SONY, and SPRINT offered through online stores identified by the same marks. Serial No. 85573597 10 3. Balancing the factors. Having considered the evidence of record and all relevant du Pont factors, including those not specifically discussed herein, we find that applicant’s mark, as applied to applicant’s identified goods, so closely resembles the cited registered mark as to be likely to cause confusion, mistake or deception as to the source of applicant’s goods. Decision: The refusal of registration is affirmed. Copy with citationCopy as parenthetical citation