Shark Eyes, Inc.Download PDFTrademark Trial and Appeal BoardJan 5, 2012No. 77965144 (T.T.A.B. Jan. 5, 2012) Copy Citation Mailed: January 5, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ___________ Trademark Trial and Appeal Board ___________ In re Shark Eyes, Inc. ___________ Serial No. 77965144 ___________ Joel Dime, President of Shark Eyes, Inc. for applicant. Colleen Dombrow, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman, Managing Attorney). ____________ Before Cataldo, Taylor and Shaw, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Shark Eyes, Inc. has filed an application to register the mark GEORGIO CAPONI, in standard characters, on the Principal Register for spectacles and sunglasses, in International Class 9.1 Registration has been finally refused pursuant to Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the stylized mark 1 Application Serial No. 77965144, filed March 22, 2010, based upon applicant’s assertion of February 16, 2007 as a date of first use of the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77850772 2 for “clothing and clothes, namely, lingerie, shoes, hats, belts, hosiery and pelisses,” in International Class 25, as to be likely to cause confusion.2 When the refusal was made final, applicant appealed and filed a request for reconsideration which was denied by the examining attorney. Applicant and the examining attorney filed briefs. Preliminary Evidentiary Issue A. Evidence Attached to Applicant’s Brief. Applicant submitted a list of third-party registrations with its request for reconsideration. The Examining Attorney denied the request for reconsideration and advised applicant that merely listing the third-party registrations is insufficient to make them of record. Applicant then attached copies of the third-party registrations to its brief and the Examining Attorney objected to these registrations as untimely. The Trademark Trial and Appeal Board does not take judicial notice of registrations, and the submission of a list of registrations does not make these registrations part of the record. In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581 (TTAB 2007); In re Duofold Inc., 184 USPQ 638 2 Registration No. 3071175, issued on March 21, 2006. Serial No. 77850772 3 (TTAB 1974). To make registrations of record during examination, soft copies of the registrations or the complete electronic equivalent (i.e., complete printouts taken from any of the USPTO’s automated systems (X-Search, TESS, TARR, or TRAM)) must be submitted. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998); In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB 1996); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231- 32 (TTAB 1992). Moreover, Trademark Rule 2.142(d) provides that “[t]he record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed.” Applicant’s attempt to overcome the Examining Attorney’s objection to the list of third-party registrations by filing copies of the listed registrations with its brief is untimely. Applicant should have requested a remand instead. TBMP §§ 1207.02 and 1208.02. Accordingly, the Examining Attorney’s objection is sustained and the third-party registrations attached to the applicant’s brief will be given no further consideration. Serial No. 77850772 4 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 likelihood of confusion issue. See In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (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, 1210 (TTAB 1999) and the cases cited therein. A. The Similarity or Dissimilarity of the Marks in Their Entireties With respect to the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or Serial No. 77850772 5 dissimilarity between them. Palm Bay Imports, 73 USPQ2d at 1691. The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Applicant’s mark consists of the words GEORGIO CAPONI in standard character form. The mark in the cited registration consists solely of the word CAPONI in a slightly stylized typeface. As such, the mark in the cited registration, CAPONI, is incorporated in full in applicant’s mark, GEORGIO CAPONI. Furthermore, the term CAPONI in both marks has the look and feel of a surname and consumers encountering the CAPONI mark may view it as a shortened version of the full name GEORGIO CAPONI. In Re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (ML is likely to be perceived as a shortened version of ML MARK LEES.). Thus, although the marks have certain differences, when we compare them in their entireties we find that on the whole they are similar in appearance, Serial No. 77850772 6 sound, connotation and commercial impression and that the additional wording in applicant’s mark is not sufficient to distinguish the marks when used on related goods. B. The Similarity or Dissimilarity and Nature of the Goods With respect to the goods, applicant is seeking to register its mark for spectacles and sunglasses, while the registered mark covers clothing and clothing accessories. As a general rule, is not necessary that the respective goods be competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originated from the same producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). The examining attorney made of record over twenty use- based, registrations owned by third parties demonstrating that eyeglasses and sunglasses often emanate from the same sources that produce clothing. The following examples are illustrative: Registration No. 3756217, WX EYEWEAR and design, for, inter alia, “protective eyewear, namely spectacles, sunglasses” and “clothing, namely shirts, t-shirts, sweatshirts, hats and caps.” Serial No. 77850772 7 Registration No. 3438412, MK MICHAEL KORS, for, inter alia, “eyeglass frames, eyeglasses, sunglasses” and “men’s and women’s clothing, namely, ... hats, ... belts, hosiery, ... undergarments for men and women ....” Registration No. 2386675, HOOK & TACKLE, for, inter alia, “sunglasses” and “men’s, women’s, boys’ and girls’ ... belts, hosiery, ... caps, hats, shoes ....” Registration No. 2133086, NINE WEST, for inter alia, “sunglasses” and “hosiery.” Registration No. 2834300, DEGREE OF SHADE, for inter alia, “sunglasses and sunglasses accessories” and “clothing and headgear, namely, hats, visors, shirts, shoes and sandals.” Registration No. 3130647, PELAGIC, for inter alia, “eyewear, namely, sunglasses, eyeglasses, and goggles” and “footwear, namely, shoes, boots, sandals, and slippers.” Registration No. 3143623, OAKLEY, for inter alia, “protective eyewear, namely, spectacles ... sunglasses” and “clothing, namely ... underwear, ... headwear, namely, hats, ... shoes ....” The examining attorney also included printouts from a number of online retail websites showing that sunglasses are routinely sold alongside clothing articles, at least in online retail stores. Finally, one website shows that a large number of eyeglass frames are offered under brand names. The following examples are illustrative: www.ninewest.com – Showing sunglasses being offered for sale with belts and hosiery, all under the category of “accessories.” www.oakley.com – Showing sunglasses being offered for sale on the same web page as men’s apparel, footwear, and clothing accessories such as hats, belts, and socks. Serial No. 77850772 8 http://shop.guess.com – Showing sunglasses being offered for sale alongside other categories of clothing and accessories such as belts and shoes. http://www1.Seanjean.com – Showing “eyewear” being offered for sale alongside other categories of clothing and accessories such as hats and belts. www.juicycouture.com – Showing sunglasses being offered for sale with belts, hats, and socks, all under the category of “accessories.” http://us.burberry.com – Showing sunglasses being offered for sale with belts and hats, all under the category of “accessories.” www.annklein.com – Showing sunglasses being offered for sale with hats and belts, all under the category of “accessories.” www.framesdirect.com – Showing a website offering numerous brand-name eyeglass frames from manufacturers such as Guess®, Juicy Couture®, Burberry®, Ann Klein®, and DKNY®. Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). In this case, the evidence of record supports a finding that the same marks are used to identify both eyewear and clothing. It appears that both eyeglasses and sunglasses are commonly offered by clothing manufacturers as a typical accessory to complement the rest of the clothing line. Thus, based upon the recitations thereof and the evidence of record, we find that applicant’s goods are related to the goods in the cited registration and, in addition, may be encountered under the same mark. C. Consumer Sophistication Serial No. 77850772 9 Applicant contends that “consumers of eyewear and clothing generally exercise substantial care before they make a purchase decision.” Br. at 6. Accordingly, applicant argues, “these consumers would easily distinguish between ‘CAPONI’ and ‘GEORGIO CAPONI.’” Id. at 7. We are not persuaded by applicant’s argument. There is no evidence in the record to show that consumers of eyewear or clothing articles exercise such a substantial degree of care before purchasing. Furthermore, the goods identified in the involved application and cited registration are not limited solely to expensive, “high-end” clothing and eyewear that might be purchased with a high degree of deliberation. As such, the goods must be presumed to include less expensive clothing and eyewear that would ordinarily be purchased with less care. See, for example, Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.”). Even assuming arguendo that purchases of such goods would involve a careful, deliberate decision, this does not mean that the purchasers are immune from confusion as to the origin of the respective goods, especially when, as here, the similar nature of the marks and the relatedness of the goods outweigh any sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Serial No. 77850772 10 Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). See also In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers ... are not infallible.”). D. Channels of Trade Applicant further argues that the examining attorney’s arguments “seek to create a per se rule in which sunglasses and clothing articles are related goods ... because of the mere existence of the same goods in third parties’ registrations.” Instead, applicant argues that there is no likelihood of confusion because its goods “do not represent a principal item or product carried by others who sell clothing.” Br. at 26. But this argument ignores the examining attorney’s internet evidence showing that applicant’s and registrant’s goods commonly emanate from a single source and travel in the same channels of trade. These website excerpts demonstrate not only that clothing manufacturers produce sunglasses as an accessory to their clothing line but also that consumers frequently encounter these sunglasses when they are sold alongside the articles of clothing. With respect to the du Pont factor of the Serial No. 77850772 11 similarity of the goods and/or services, the case law is clear that it is sufficient that the respective goods or services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer. See In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Given the evidence showing that clothing manufacturers often also apply their marks to sunglasses and sell them alongside their clothing goods, we find that consumers presented with similar marks would be likely to believe the goods come from a single source. We conclude that in view of the substantial similarities between GEORGIO CAPONI and CAPONI, their contemporaneous use on the identified related goods is likely to cause confusion as to the source or sponsorship of such goods. Decision: The refusal under Section 2(d) of the Trademark Act is affirmed and registration to applicant is refused. Copy with citationCopy as parenthetical citation