Saygus, Inc.

Trademark Trial and Appeal BoardApr 3, 2014

No. 85544065 (T.T.A.B. Apr. 3, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: April 3, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Saygus, Inc. _____ Serial No. 85544065 _____ Steven Stewart of Steven Stewart PLLC for Saygus, Inc. Jennifer Button, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _____ Before Cataldo, Lykos, and Gorowitz, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Saygus, Inc. (applicant) seeks registration on the Principal Register for the mark Vphone in standard characters for, as amended, “cellular phones and smartphones for distribution via retail outlets or via internet store fronts” in Class 9.1 Registration has been refused pursuant to 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, vfon & design, as set forth below: 1 Application Serial No. 85544065, filed February 15, 2012, pursuant to Section 1(a) of the Trademark Act, alleging first use anywhere and first use in commerce as of February 18, 2009. Serial No. 85544065 2 for, inter alia, “handheld devices with integrated circuits, namely mobile phones” in Class 92 that, as used in connection with applicant's identified goods, it is likely to cause confusion or mistake or to deceive. The examining attorney issued a final refusal of registration, from which applicant requested reconsideration. This appeal follows the denial of the request. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (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 and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We start our analysis with the second du Pont factor, the similarity or dissimilarity of the goods. We must make our determination based on the goods as they are identified in the registration and application. In re Dixie Restaurants Inc., 2 Reg. No. 3307435 issued October, 9, 2007, pursuant to Section 66(a); Section 71 declaration accepted December 4, 2012. Reg. No. 3307435 covers an extensive list of goods in Class 9 and of services in Class 38. Serial No. 85544065 3 41 USPQ2d at 1534. See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s goods are “cellular phones and smartphones for distribution via retail outlets or via internet store fronts.” Registrant’s goods include “mobile phones.” “Cellular telephone” or “cellular phone” is defined in The Free Dictionary by Farlex, (www.thefreedicitonary.com) as: a mobile radiotelephone, often in an automobile that uses a network of short-range transmitters located in overlapping cells throughout a region, with a central station making connections to regular telephone lines. Also called mobile telephone. Denial of Request for Reconsideration dated July 22, 2013. Therefore applicant’s cellular phones are identical to registrant’s mobile phones. “A smartphone is a “cellular telephone with built-in applications and Internet access.” PCMAG.COM (www.pcmag.com/encyclopedia/term/51537smartphone). Id. Therefore, applicant’s smartphones are also mobile phones and are identical to registrant’s goods. Since the goods are, in part, identical, the second du Pont factor strongly favors a finding of likelihood of confusion. We turn next to the third du Pont factor, the channels of trade. Applicant’s channels of trade were restricted to “distribution via retail outlets or via internet store fronts.” Applicant does not contend that these channels of trade are different from the channels of trade through which registrant’s goods travel. Moreover, since no restrictions on the channels of trade are recited in the cited registration, it is presumed that they “move in all channels of trade for such goods.” In re Elbaum, Serial No. 85544065 4 211 USPQ 639, 640 (TTAB 1981). The sale of mobile phones through retail outlets and internet store fronts are normal channels of trade for such goods. Accordingly, the channels of trade are identical and the third du Pont factor favors a finding of likelihood of confusion. Applicant asserts that the intended audience of the parties’ respective products is sophisticated. Appeal Brief, p. 2, 7 TTABVue 3. Applicant provides no evidence to support this contention. As noted by the examining attorney, “[b]oth applicant and registrant identify average consumer goods and there is nothing inherent in the nature of the goods that would lead to the conclusion that purchasers are sophisticated.” Examining Attorney’s Brief, p. 5, 9 TTABVue 7. Since no evidence was submitted in support of the respective positions, we find this factor to be neutral. We next consider the first du Pont factor, the similarity or dissimilarity of the marks Vphone and Vfon & design, and compare them “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). “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, 668 F.3d 1356, 101(USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Serial No. 85544065 5 Applicant argues that the marks as viewed in their entireties are different in appearance, sound and commercial impression. We disagree. While we analyze the marks in their entireties, it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature when evaluating the similarities of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Further, the emphasis of our analysis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009), citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Applicant alleges differences in the appearance of the marks, however, applicant does not specify what it considers the differences to be. Applicant argues that because its goods are sold through retail channels the “[v]isual dissimilarity outweighs aura [sic] similarity.” Appeal Brief, p. 3, 7 TTABVue 4. The cases that applicant relies on to support this principle can all be distinguished from the case at bar. In the first case, One Industries LLC v. Jim O’Neal Distributing Inc., 578 F3d 1154, 92 USPQ2d 1065 (9th Cir. 2009), the issue was the similarity of two marks consisting of the letter “O,” each of which was depicted in a different stylized Serial No. 85544065 6 format.3 The Court did find that appearance was the most important factor in an evaluation of similarity of marks in this case because Verbally articulating the Rounded O’ mark or the One Icon, or mentally pondering the meaning of the marks, is not part of buying a motorcycle helmet. Id., at 1071. In the case at bar, the verbal portions of both marks are pronouncable and are part of buying mobile phones. In the second case, Del Laboratories, Inc., v. Alleghany Phamacal Corp., 516 F.Supp 777 215 USPQ 421 (SDNY 1981), the cause of action was infringement and the Court noted that “although the names have some aural resemblances as a result of the initial letters, there is total visual dissimilarity between the marks on the products as they appear to consumers.” Id., at 426, citing Spangler Candy Co. v. Crystal Pure Candy Co., 235 F.Supp. 18, 143 USPQ 94 (ND Ill. 1964), aff'd, 353 F.2d 641 (7th Cir. 1965). In the Del Laboratories case, the differences in the trade dress used by the respective marks was sufficient to distinguish the marks, while in the Spangler Candy case, the trade dress used by the parties was very similar, the literal portions of the marks “DUM-DUM” and “POP-POP” were different. We further observe that the issue in the case at bar is likelihood of confusion, not infringement. The marks at issue are those in the application, Vphone and the registration, . 3 The marks at issue were and . Serial No. 85544065 7 Applicant’s mark Vphone is the phonetic equivalent of the verbal portion of registrant’s mark Vfon. The verbal portion of a word and design mark likely will be the dominant portion … [since it] is the one most likely to indicate the origin of the goods to which it is affixed.” This makes sense given that the literal component of brand names likely will appear alone when used in text and will be spoken when requested by consumers. (“This is particularly true when a mark appears in textual material, such as catalog descriptions, in which it is often impossible or impractical to include the design feature of the mark”).” In re Viterra Inc., 671 F3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (internal citations omitted). Moreover, the design element in registrant’s mark is a minor design incorporated in the letter “f.” Both applicant’s and registrant’s goods are phones. Accordingly, the word “phone” and its phonetic equivalent “fon” as depicted in the marks, are generic for all of the goods at issue. As such, the letter “V” is the dominant portion of both marks. Since the dominant portions of the marks are identical and the subordinate generic verbal portions of the marks are similar, overall we find the marks to be similar in appearance. The minor design element in registrant’s mark, which appears to be an indicia of volume, is part of the letter “f” of the word “fon” and does not significantly distinguish the marks. We look next at the similarities in sound, which we have found to be phonetic equivalents. Applicant argues that the marks are not phonetic equivalents since “the [r]egistrants [sic] VFon mark has a different sound than applicant’s Vphone Serial No. 85544065 8 mark. Specifically, the ‘O’ in VFon has a soft ‘O’ sound [like ‘o’ in the word ‘on’] and the ‘O’ in applicants [sic] mark is a hard ‘O’ like O [sic] in the word Ocean.” Appeal Brief, pp. 2-3, 7 TTABVue 3 - 4. This is the same argument put forth by the applicant in the Viterra case, supra, which was rejected by both the Board and the Court of Appeals for the Federal Circuit. The Court found that this argument merited little discussion and quoted the Board’s factual finding that “it is hard to imagine that the two marks will not sound alike when spoken.” Id. at 1912. The same finding applies in this case. Moreover, the Court confirmed the long held principle that “there is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.” Id. at 1913. When applying this principle in the case at bar, we find the marks are phonetic equivalents and thus any minor differences in the sound of these marks may go undetected by consumers and, therefore, would not be sufficient to distinguish the marks. See id. at 1913. Accordingly, we find the marks to be similar in sound. There is no evidence that the terms VPhone and Vfon have any meaning or connotation. However, if there is one, the meaning and connation would be the same since the dominant portion, the letter “V, is identical and the word “phone” and its phonetic equivalent “fon” have the same meaning. Accordingly, we find that the first du Pont factor favors a finding of likelihood of confusion. Having considered all the evidence and arguments on the relevant du Pont factors discussed herein, we find that applicant’s mark VPhone is likely to cause Serial No. 85544065 9 confusion with the cited mark, Vfon & design. The remaining du Pont factors we treat as neutral. Decision: The refusal under Section 2(d) of the Act is affirmed.