RYO SmokeSmart, LLC

Trademark Trial and Appeal BoardSep 4, 2012

No. 85276679 (T.T.A.B. Sep. 4, 2012)

Mailed: September 4, 2012 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ In re RYO SmokeSmart, LLC ________ Serial No. 85276679 _______ John D. Gugliotta of Patent, Copyright & Trademark Law Group, LLC for RYO SmokeSmart, LLC. Doritt Carroll, Trademark Examining Attorney, Law Office 116 (Manager, Michael Baird). _______ Before Bergsman Wellington, and Ritchie, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Applicant seeks registration on the Principal Register of the mark Smoke 4 Less, in standard character form, for services identified in the appli- cation, as amended, as follows: Specialty tobacco retailer providing access to “roll-your- own” tobacco machines, in International Class 35. 1 The Trademark Examining Attorney refused registration on the ground that applicant’s mark is likely to cause confusion with the registered mark SMOKES FOR LESS and design, shown below, for “retail store services fea- 1 Application Serial No. 85276679 was filed on March 25, 2011, based upon appli- cant’s allegation of a bona fide intention to use the mark in commerce. This Opinion is NOT a Precedent of the TTAB Serial No. 85276679 - 2 - turing tobacco, cigarettes and cigars,” in Class 35, under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d) .2 Registration also was refused on the ground that applicant’s mark is merely descriptive under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1). After the Trademark Examining Attorney made the refusals final, ap- plicant appealed to this Board. We affirm the refusals to register. Merely Descriptive According to the Trademark Examining Attorney, applicant’s mark SMOKE 4 LESS is merely descriptive because it “succinctly states the pur- pose of the services – to enable customers to ‘smoke’ or obtain a ‘smoke’ inex- pensively – “for less” than the normal price.”3 Applicant in its brief stated that one of the advantages of a “roll-your-own” tobacco machine is that the cigarettes that are made are less expensive than commercially sold ciga- rettes.4 2 Registration No. 2869294 issued August 3, 2004; Section 8 affidavit accepted. The registration was issued under the provisions of Section 2(f) of the Trademark Act. 3 Trademark Examining Attorney’s Brief, p. 9 (unnumbered). 4 Applicant’s Brief, p. 3. Serial No. 85276679 - 3 - Applicant’s “SMOKE 4 LESS” mark relates the name of their specialty retail tobacco stores. With- in each retail store, customers have access to a “roll-your-own” tobacco machine. These roll-your- own tobacco machines allow the customer to roll cigarettes to their personal desire and specifica- tions. * * * The advantages of these roll-your-own tobacco ma- chines to the consumer are numerous, but specifi- cally the cigarettes produced are less expensive and contain less additives than federally regulated and commercially sold packaged cigarettes. The roll-your-own tobacco machines allow a con- sumer to purchase an equivalent of a carton of commercially packaged cigarettes for less money than a standard carton. … The consumer purchases the roll-your-your-own cigarettes for less money this way because the taxes on loose tobacco and cigarette paper are less than on a fully manufac- tured cigarette.5 “A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used." In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in rela- tion to the goods and services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the ques- tion is not whether someone presented only with the mark could guess the 5 Applicant’s Brief, pp. 2-3. Serial No. 85276679 - 4 - services listed in the recitation of services. Rather, the question is whether someone who knows what the services are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). When two or more merely descriptive terms are combined, the determi- nation of whether the composite mark also has a merely descriptive signifi- cance turns on the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely de- scriptive significance in relation to the goods or services, the combination re- sults in a composite that is itself merely descriptive. See In re Tower Tech, Inc., 64 USPQ2d 1314 (SMARTTOWER merely descriptive of commercial and industrial cooking towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in developing and deploying application programs); In re Putman Publish- ing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE mere- ly descriptive of news and information services in the food processing indus- try). In this regard, we must consider the issue of descriptiveness by looking at the mark in its entirety. Common words may be descriptive when standing alone, but when used together in a composite mark, they may become a valid Serial No. 85276679 - 5 - trademark. See Concurrent Technologies Inc. v. Concurrent Technologies Corp., 12 USPQ2d 1054, 1057 (TTAB 1989) (CONCURRENT TECHNOLOGIES CORPORATION found not merely descriptive of printed electronic circuit boards because, while “concurrent” had meaning in the com- puter field, “concurrent technologies” had no established meaning in relation to computer hardware or software). Finally, “if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteris- tics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978). See also, In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Sys- tems, Inc., 209 USPQ 165, 166 (TTAB 1980). To support her argument, the Trademark Examining Attorney submit- ted the definition of the word “smoke” which is defined, inter alia, as ‘the act of smoking a form of tobacco: went out for a smoke” or “to draw in an exhale smoke from a cigarette, cigar, or pipe.”6 The word “less” is defined as “not as great in amount or quantity” or “a smaller amount.”7 The numeral 4 is the phonetic equivalent of the word “for,” a preposition that is defined, inter alia, as “in order to obtain, gain or acquire.”8 Thus, the mark SMOKE 4 LESS lit- 6 The FreeDictionary.com derived from the AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000) attached to the June 23, 2011 Office action. 7 Id. 8 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), p. 747 (2nd ed. 1987). The Board may take judicial notice of diction- Serial No. 85276679 - 6 - erally means smoking tobacco acquired for a smaller amount. As noted above, applicant concedes that its mark means obtain cigarettes that are less expen- sive. The Trademark Examining Attorney also submitted numerous third- party registrations for marks comprising variations of the terms “4 Less” or “For Less” issued on the Supplemental Register or the Principal Register un- der the provisions of Section 2(f) or with the exclusive right to use the terms “4 Less” or “For Less” disclaimed. The following registrations are illustrative. 1. Registration No. 2916826 for the mark DRIVE FOR LE$$ and de- sign (Supplemental Register) for “providing consumer information over a website which shows how to reduce the cost of driving a car”; 2. Registration No. 3130825 for the mark RENT4LESS and design, the exclusive right to use “Rent4Less” disclaimed, for a “car rental com- pany”; and 3. Registration No. 3113834 for the mark WASH FOR LESS, the term “for less” has acquired distinctiveness, for “car wash services.” These registrations suggest that variations of the term “for less” have been adopted to convey that the product or services identified in the registrations have been obtained for a reduced price. The third-party registrations also ary evidence. The Random house Dictionary of the English Language (Una- bridged), p. 1804 (2nd ed. 1987). University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 85276679 - 7 - support the finding that the term SMOKE 4 LESS in its entirety maintains its literal meaning. Applicant’s substitution of the numeral “4” in place of the word “for” does not alter the meaning or commercial impression engendered by the mark. “Slight variations in spelling of marks from their traditional spelling does not change the meaning of the term if the underlying term is itself de- scriptive.” In re Vanilla Gorilla L.P., 80 USPQ2d 1637, 1639 (TTAB 2006). The Supreme Court has held that: The word, therefore is descriptive, not indicative of the origin or ownership of the goods; and being of that quality, we cannot admit that it loses such quality and becomes arbitrary by being misspelled. Bad orthography has not yet become so rare or so easily detected as to make a word the arbitrary sign of something else than its conventional mean- ing…. Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 455 (1911). See also Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315, 39 USPQ 402 (1938) (NU-ENAMEL; NU held equivalent of “new”); In re Quik- Print Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK- PRINT held descriptive; “There is no legally significant difference here be- tween ‘quik’ and ‘quick’”); Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962) (“TINTZ [is] a phonetic spelling of ‘tints’”); King-Kup Candies, Inc. v. King Candy Co., 288 F.2d 944, 129 USPQ 272, 273 (CCPA 1961) (“It is clear, therefore, that the syllable ‘Kup,’ which is the full equiva- lent of the word ‘cup,’ is descriptive); Andrew J. McFarland, Inc. v. Montgom- Serial No. 85276679 - 8 - ery Ward & Co., 164 F.2d 603, 76 USPQ 97, 99 (CCPA 1947) (KWIXTART merely descriptive for electric storage batteries); In re Organik Technologies Inc., 41 USPQ2d 1690, 1694 (TTAB 1997) (ORGANIK “is the phonetic equiva- lent of the term ‘organic’“); and Hi-Shear Corp. v. National Automotive Parts Association, 152 USPQ 341, 343 (TTAB 1966) (HI-TORQUE “is the phonetic equivalent of the words ‘HIGH TORQUE’”). Applicant argues that its mark is suggestive when considered in its en- tirety as evidenced by that fact that there is no dictionary definition for the entire phrase.9 It is well settled that the fact that a term is not found in a dic- tionary is not controlling on the question of registrability where as in the pre- sent case the term has a well understood and recognized meaning. See In re Bausch & Lomb Inc., 206 USPQ 534, 536 (TTAB 1979); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977); In re Dairimetics, Ltd., 169 USPQ 572, 573 (TTAB 1971). Applicant also argues that its mark is not merely descriptive if one its meanings is not descriptive when applied to the services at issue. In this re- gard, applicant asserts that “[t]he varied meanings that could reasonably be attributed to SMOKE 4 LESS shown by the numerous dictionary definitions of ‘smoke’ and ‘for’ cited by the Examining Attorney, some which are not mere- ly descriptive, should support a reversal of the Examining Attorney’s refusal 9 Applicant’s Brief, p. 10. Serial No. 85276679 - 9 - to register SMOKE 4 LESS.”10 The only meaning we see when applying the mark SMOKE 4 LESS in connection with a “specialty tobacco retailer provid- ing access to ‘roll-your-own’ tobacco machines” is tobacco acquired for less money, and applicant has not provided an alternative meaning. In view of the foregoing, we find that the mark SMOKE 4 LESS for a “specialty tobacco retailer providing access to ‘roll-your-own’ tobacco ma- chines” is merely descriptive because it directly conveys the message that con- sumers may purchase inexpensive tobacco products. Likelihood of Confusion 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 Distil- ling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similar- ities between the marks and the similarities between the services. See Feder- ated 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 cumu- lative effect of differences in the essential characteristics of the goods and dif- ferences in the marks”). These factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. 10 Applicant’s Brief, pp. 10-11. Serial No. 85276679 - 10 - A. The similarity or dissimilarity of the marks in their entireties as to ap- pearance, sound, connotation and commercial impression. 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 appear- ance, 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 a partic- ular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In compar- ing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather wheth- er the marks are sufficiently similar in terms of their overall commercial im- pression so that confusion as to the source of the goods offered under the re- spective marks is likely to result. 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 USPQ 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Win- ston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this case, the average customer is a smoker. Serial No. 85276679 - 11 - Applicant’s mark SMOKE 4 LESS is very similar to the registered mark SMOKES FOR LESS (stylized) in terms of appearance, sound, meaning and commercial impression. With respect to the appearance of the marks, the stylization of the registered mark is not so distinctive that it serves as a basis to distinguish the marks. Furthermore, the words SMOKES FOR LESS are the dominant portion of the registered mark because they would be used by consumers to refer to the retail store services. See In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). 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 entire- ties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). As indicated above, the meaning and commercial impression engendered by applicant’s mark, SMOKE 4 LESS, is that applicant’s services allow con- sumers to roll their own cigarettes and thereby save money in the process. The meaning and commercial impression engendered by the registered mark, SMOKES 4 LESS, is very similar to the meaning proffered by applicant with regard to its mark. That is, because “smokes” is synonymous with cigars Serial No. 85276679 - 12 - or cigarettes, the mark is essentially telling consumers that the products be- ing sold under that mark are “for less” and, as with applicant’s mark, the pre- sumption is that “for less” is a reference to saving money.11 Thus, the mean- ings and commercial impressions engendered by the two marks are very simi- lar in the sense that both marks are, at the very least, suggestive of saving money in the process of making or buying cigarettes. Applicant argues that its mark, as actually used, “contains a unique display, including a stylized number 4, shaped to look like a lighter that a consumer would use to light a cigar or cigarette. Further, Applicant’s logo makes use of shape angles and solid lines. The horizontal lines are straight and thin.”12 However, because applicant filed to register its mark in standard character form, the rights associated with applicant’s mark reside in the wording and not in any particular display. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). Thus, applicant’s mark could appear in a format similar to the registered mark. Moreover, because applicant is only seeking to register the words, and not its logo, the trade dress used in con- junction with applicant’s mark may not be used to distinguish the commercial impressions engendered by the marks at issue because such dress may be 11 The word “smokes” is defined, inter alia, as “something for smoking, such as a cigar or cigarette: ‘This is the best smoke on the market.’” 12 Applicant’s Brief, pp. 4-5. Serial No. 85276679 - 13 - changed at any time. Kimberly Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144, 1147, 227 USPQ 541, 543 (Fed. Cir. 1985). In view of the foregoing, we find that applicant’s mark is similar to the registered mark in terms of appearance, sound, meaning and commercial im- pression. B. The similarity or dissimilarity and nature of the products/services de- scribed in the application and registration, likely-to-continue trade channels and classes of consumers. Because the scope of the registration applicant seeks is defined by its application (and not by its actual use) it is the application (and not actual use) that we must look to in determining applicant’s right to register: The authority is legion that the question of regis- trability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are di- rected. Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). By the same token, when considering the scope of the cited registration, we look to the registration itself, and not to extrinsic evidence about the regis- trant’s actual goods, customers, or channels of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958). Serial No. 85276679 - 14 - Applicant is seeking to register its mark for a “specialty tobacco retailer providing access to ‘roll-your-own’ tobacco machines,” and the mark in the cit- ed registration is for “retail store services featuring tobacco, cigarettes and ci- gars.” As stated previously, the recitation of services both for applicant and registrant are for retail tobacco sales: applicant, a tobacco retailer who pro- vides access to roll-your-own cigarette machines and registrant featuring to- bacco, cigarettes and cigars. It is likely that applicant is offering for sale loose tobacco for customers to use to roll their own cigarettes. In this regard, appli- cant’s services are likely to be competitive with, and are at least complemen- tary to, registrant’s services to the extent that one seeking to roll his or her own cigarettes may purchase loose tobacco via registrant’s SMOKES FOR LESS retail services and then seek to actually roll his or her own cigarettes utilizing machines accessed via applicant’s SMOKE 4 LESS retail services. Certainly, the services of applicant and registrant are both directed to smok- ers. The person who accesses a “roll-your-own” tobacco machine does so as an alternative to packaged cigarettes or cigars. Accordingly, roll-your-own” to- bacco machines and cigarettes or cigars are also competitive products. The evidence submitted by the Trademark Examining Attorney shows that the same retailers sell a wide variety of tobacco products including roll- your-own tobacco machines and tobacco, cigarettes and cigars. For example, the Genuine Tobacco Co. (genuinetobacco.com) lists the following tobacco products: smokeless, snus, roll your own (tobacco and rolling machines), leaf Serial No. 85276679 - 15 - tobacco, pipe tobacco, cigars and electronic cigarettes.13 See also, the Roll Your Own website (ryotobacco.com), RYOCigarret.com, the Fresh Choice web- site (freshchoice.com), the 1st Class Cigar Humidors website (cigarhumidors- online.com).14 Accordingly, a tobacco retailer providing to “roll-your-own” to- bacco machines also provides tobacco, cigars and cigarettes. Thus, the same consumers may encounter all these products in the same retail tobacco store. In view of the foregoing, we find that the services are related and that the channels of trade and classes of consumers are similar. C. Balancing the factors. Because the marks and services are similar and because the services move in the same channels of trade and are sold to the same classes of con- sumers, we find that applicant’s mark SMOKE 4 LESS for a “specialty tobacco retailer providing access to ‘roll-your-own’ tobacco machines” is likely to cause confusion with the mark SMOKES FOR LESS (stylized) for “retail store ser- vices featuring tobacco, cigarettes and cigars.” Decision: The refusals to register are affirmed. 13 September 7, 2011 Office action. 14 Id.