Seena International Inc.

Trademark Trial and Appeal BoardJul 7, 2010

No. 76694609 (T.T.A.B. Jul. 7, 2010)

Mailed: July 7, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ___________ Trademark Trial and Appeal Board ___________ In re Seena International Inc. ___________ Serial No. 76694609 ___________ Ira J. Levy and Jessica L. Rothstein of Goodwin Procter for Seena International Inc. Meghan M Reinhart, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney).1 ____________ Before Walters, Bucher and Bergsman, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Seena International Inc. has filed an application to register the standard character mark DITCH PLAINS on the Principal Register for “mens and womens clothing, namely, suits, trousers, jackets, blouses, pants, dresses, shirts, shorts, board shorts, underwear, jeans, T-shirts, hats, 1 Although Ms. Reinhart is listed in the USPTO records as the Trademark Examining Attorney of record, we note that the office actions and brief were prepared by two other trademark examining attorneys. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 76694609 2 vests, sweatshirts, ties, tank tops, coats, hats (sic) and swim trunks,” in International Class 25.2 The examining attorney has issued a final refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark so resembles the typed mark DITCH PLAINS, previously registered for “oyster bar, restaurant and bar services,” in International Class 43,3 that, if used on or in connection with applicant’s goods, it would be likely to cause confusion or mistake or to deceive. Applicant has appealed. Both applicant and the examining attorney have filed briefs. We affirm the refusal to register. 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 likelihood of confusion issue. See In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 2 Serial No. 76694609, filed December 3, 2008, based on first use and use in commerce as of July 17, 2007. 3 Registration No. 3327160, issued October 30, 2007, to West Broadway Management LLC. Serial No. 76694609 3 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited therein. The Marks We turn our consideration, first, to the marks and draw the obvious conclusion that applicant’s mark and the registered mark are identical in terms of appearance, sound, connotation and commercial impression. This du Pont factor weighs strongly against registrability. The Goods/Services We thus begin our analysis of the respective goods and services with the premise that, because the marks at issue are identical, the extent to which the applicant’s goods and registrant’s services must be similar or related to support a finding of likelihood of confusion is lessened. See In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). It is only necessary that there be a viable relationship between the Serial No. 76694609 4 two to support a finding of likelihood of confusion. See In re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). The question of likelihood of confusion must be determined based on an analysis of the goods or services recited in applicant’s application vis-à-vis the goods or services recited in the registration, rather than what the evidence shows the goods or services actually are. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems, Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). Further, it is a general rule that goods and services need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that goods and services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties’ goods and services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited Serial No. 76694609 5 therein; and Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002). The examining attorney contends that applicant’s clothing items are closely related and complementary to registrant’s restaurant services. She submitted excerpts from several restaurant websites that include T-shirts and other clothing items bearing the restaurant name for sale through the website; and copies of third-party registrations that include both clothing items and restaurant services in the identification of goods. The following are several representative examples from the record: • A registration for the mark TOMMY BAHAMA’S BAR AND GRILLE for restaurant services; an excerpt from the Tommy Bahama website referencing Tommy Bahama clothing and cafes; and an excerpt from www.opentable.com reviewing Tommy Bahama’s Island Bar and Grille. • An excerpt from www.Margaritaville.com showing use of the mark JIMMY BUFFET’S MARGARITAVILLE in connection with both restaurant services and various items of clothing. • An excerpt from www.PlanetHollywood.com showing use of the mark PLANET HOLLYWOOD in connection with both restaurant services and clothing; and a registration owned by Planet Hollywood for the mark PLANET DAILIES for restaurant services and various items of clothing. Serial No. 76694609 6 • An excerpt from a website owned by The Blue Monkey Sports Bar showing use of the mark BLUE MONKEY in connection with both restaurant and bar services and clothing; and a registration for BLUE MONKEY for restaurant services and various items of clothing. • Third-party registrations for the following marks, all of which include in the identifications both restaurant services and clothing: CANCUN LAGOON, HARD ROCK, CAROLINA WINGS, BIG SKY, SANDERS’ BARE BUTT BBQ CO., LOOSELEAF SALAD COMPANY, and RAINBOW BAR AND GRILL. Applicant argues that there is no per se rule that restaurant services and clothing are related; that the evidence in the record is minimal and does not establish such a relationship; and that the sale of clothing by only a few well-known restaurants is merely promotional and, thus, not probative. Comparing applicant’s clothing with registrant’s restaurant services, it is obvious that they are distinctly different. However, as indicated above, goods and services need not be identical or even competitive in order to support a finding of likelihood of confusion. In this case, we find the record sufficient to establish that restaurants do sell clothing in connection with their restaurant services. Whether this clothing also serves to promote the restaurant is immaterial. The record contains no evidence Serial No. 76694609 7 about whether the third-party marks are well-known, but that is also immaterial. Suffice it to say, the evidence from Internet websites and third-party registrations clearly establishes a relationship between restaurants and at least the jackets, shorts, T-shirts, hats, and sweatshirts identified in the application. In this regard, we note that applicant did not submit any evidence to rebut the evidence submitted by the examining attorney or to support its own factual assertions. Because likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application, see Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981), the USPTO need show only that at least one of the identified goods identified in the application is related to the services of the cited registration. This du Pont factor also weighs against registrability. Channels of Trade/Class of Purchasers Neither the identification of goods in the involved application nor the recitation of services in the cited registration is limited to any specific channels of trade or class of purchasers. Clearly, the usual class of purchaser for both the goods and services is the general public. Presumably, the trade channels overlap to the extent, at least, that clothing items are available for sale at Serial No. 76694609 8 restaurants and through restaurant websites. Thus, these du Pont factors also weigh against registrability. Conclusion When we consider the record and the relevant likelihood of confusion factors, and all of applicant's arguments relating thereto, including those arguments not specifically addressed herein, we conclude that in view of the identical nature of the marks, their contemporaneous use on the related goods and services involved in this case is likely to cause confusion as to the source or sponsorship of such goods and services. To the extent that any doubts might exist as to the correctness of our likelihood of confusion conclusion, we resolve such doubts in favor of the registrant. See Century 21 Real Estate Corp., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992); Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006); and Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004). Decision: The refusal under Section 2(d) of the Act is affirmed.