Simplicitie Inc.

Trademark Trial and Appeal BoardJan 8, 2021

88811662 (T.T.A.B. Jan. 8, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: January 8, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Simplicitie Inc. _____ Serial No. 88811662 _____ Gene Bolmarcich of Law Offices of Gene Bolmarcich for Simplicitie Inc.. Valerie Kaplan, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Zervas, Greenbaum and Dunn, Administrative Trademark Judges. Opinion by Dunn, Administrative Trademark Judge: Applicant, Simplicitie Inc., seeks registration on the Principal Register of the mark KOONIEZ (in standard characters) for “pants” in International Class 25.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that 1 Application Serial No. 88811662 was filed on February 26, 2020, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as January 1, 2020. References to the application are to the downloadable .pdf version of documents available from the TSDR (Trademark Status and Document Retrieval) database. The TTABVUE citations refer to the Board’s electronic docket, with the first number referring to the docket entry and the second number, if applicable, referring to the page within the entry. Serial No. 88811662 - 2 - Applicant’s mark, when used in connection with the identified goods, so resembles the mark KUNIZI (in standard characters), registered on the Principal Register for a wide range of clothing, including pants, in International Class 252 as to be likely to cause confusion, mistake or deception. After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. I. Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co. (DuPont), 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). A. Relationship between the Goods and Channels of Trade and Classes of Purchasers With regard to the relationship between Applicant’s goods and the goods in the cited registration and their channels of trade and classes of purchasers, we must make our determination under these factors based on the goods as they are identified 2 Registration No. 5702541 issued March 19, 2019. Serial No. 88811662 - 3 - in the application and cited registration. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017). In assessing the similarity or dissimilarity and nature of the goods, the Board “considers whether ‘the consuming public may perceive [the respective goods or services of the parties] as related enough to cause confusion about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)). In this case, the goods are in part identical. As stated, Applicant seeks registration for “pants,” and pants are one of the apparel items listed in the cited registration. No more is necessary to support a finding of similarity that supports a likelihood of confusion. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single good from among several may sustain a finding of likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (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 or services in the application). Where, as here, the goods of the application at issue and the cited registration are, in part, identical, we must presume that the channels of trade and classes of purchasers for these goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Information Builders Inc., 2020 USPQ2d 10444, *3 (TTAB 2020). Serial No. 88811662 - 4 - Applicant’s brief does not contest the identity in part of the goods, or contend that they travel in different channels of trade or to different classes of purchasers. We find the DuPont factors regarding the goods, channels of trade and classes of purchasers weigh in favor of finding a likelihood of confusion. B. Similarity or Dissimilarity of the Marks We consider Applicant’s mark KOONIEZ and the registered mark KUNIZI, both in standard characters, 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 marks “must be considered … in light of the fallibility of memory.” St. Helena Hosp., 113 USPQ2d at 1085 (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average consumer, who retains a general rather than specific impression of the marks. Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). “When the goods are identical, the appearance of a mark of similar sound, appearance, or connotation is more likely to cause confusion than if the goods are significantly different.” See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012). See Century 21 Real Estate v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.1992) ("When Serial No. 88811662 - 5 - marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines."). We find that Applicant’s mark KOONIEZ and the registered mark KUNIZI are phonetic equivalents, and so sound the same. Applicant disagrees, contending that KOONIEZ is pronounced “koo nee ez” and KUNIZI is pronounced “koo nee zee” or “koon iz ee,” and so the marks are not phonetic equivalents.3 We do not argue with Applicant as to how it believes its mark to be correctly pronounced, but note that there is no evidence on this point. As Applicant recognizes,4 “there is no correct pronunciation of a trademark.” In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227, 228 (Fed. Cir. 1969). See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) ("[T]here is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner."); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 n.3 (TTAB 1987) ("[C]orrect pronunciation as desired by the applicant cannot be relied upon to avoid a likelihood of confusion."). Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re Viterra Inc., 101 USPQ2d at 1911 (XCEED and X-SEED and design, both for agricultural seed, confusingly similar); In re Belgrade Shoe Co., 162 USPQ at 227 (COLEEJUNS and COLLEGIENNE, both for shoes, confusingly similar); Centraz Indus. Inc. v. Spartan Chem. Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 3 4 TTABVUE 3-4. 4 Id. Serial No. 88811662 - 6 - 2006) (ISHINE (stylized) and ICE SHINE, both for floor finishing preparations, confusingly similar); RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980) (REMACS and design and RE/MAX, both for realty services, confusingly similar); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975) (FINGERMAGIC and RINGAMAJIGS, both for building toys, confusingly similar); In re Cresco Mfg. Co., 138 USPQ 401, 402 (TTAB 1963) (CRESCO and design and KRESSCO, for related clothing items, confusingly similar); The Nestle Co., Inc. v. Caracushansky, 135 USPQ 226, 227 (TTAB 1962) (REFRESCAFE and NESCAFE, both for coffee drinks confusingly similar); The Singer Mfg. Co. v. Morse Sewing Machine & Supply Corp., 106 USPQ 377, 378 (Comm’r 1955) (STYLE-O-MATIC and DIAL-O-MATIC, both for sewing machines, confusingly similar). With respect to the meanings of the two marks, Applicant asserts that “Neither mark has a meaning,” “both marks are coined terms,” and, while conceding that it is a subjective assessment, “KUNIZI looks like an Italian word and KOONIEZ has a playful look.”5 On this record, we agree that neither mark has any meaning, and both are fanciful terms and would be perceived as such. We further find that as a coined term, the registered mark is strong, and entitled to broad trademark protection. See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1181 (Fed. Cir. 2004) (defining a fanciful mark as “a non-dictionary word concocted by the trademark holder for its product” and observing that such marks are typically strong); Mishawaka Rubber & Woolen Mfg. Co. v. Bata Narodni Podnik, 222 F.2d 5 4 TTABVUE 4. Serial No. 88811662 - 7 - 279, 105 USPQ 432, 437 (CCPA 1955) (“A strong and fanciful mark is entitled to broad protection.”); In re Ginc UK Ltd., 90 USPQ2d 1472, 1479 (TTAB 2007) (“the completely unique and arbitrary, if not coined, nature of ZOG in relation to clothing not only entitles the registered mark to a broad scope of protection, but significantly increases the likelihood that the marks, when used in connection with the identical goods would cause confusion.”). Turning to the marks in their entireties, we find that KOONIEZ and KUNIZI are phonetically equivalent in sound. We find, as a result, that the differences between the marks are outweighed by their similarities and weigh the DuPont factor concerning the marks in favor of finding likelihood of confusion. C. Balancing the Factors In conclusion, we have considered all of the arguments and evidence of record, and all relevant DuPont factors. While we recognize the differences between the marks, we find that that the registered mark KUNIZI is entitled to broad protection, that Applicant’s mark KOONIEZ is the phonetic equivalent to the registered mark KUNIZI, and that when marks which sound the same are applied to the identical goods, confusion is likely. Decision: The refusal to register Applicant’s mark KOONIEZ is affirmed.