Rydeen North America Inc.

Trademark Trial and Appeal Board

Jan 16, 2014

No. 85573597 (T.T.A.B. Jan. 16, 2014)

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.
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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.