SoleMates, LLC

Trademark Trial and Appeal BoardMar 22, 2013

No. 85262439 (T.T.A.B. Mar. 22, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: March 22, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re SoleMates, LLC ________ Serial No. 85262439 _______ Fritz L. Schweitzer Jr. of St Onge Steward Johnston & Reens LLC for SoleMates, LLC. Anthony Rinker, Trademark Examining Attorney, Law Office 102 (Mitch Front, Managing Attorney). _______ Before Seeherman, Cataldo and Lykos, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: SoleMates, LLC has applied to register on the Principal Register the mark SOLEMATES in standard characters for “jewelry” in International Class 14.1 1 Application Serial No. 85262439, filed March 9, 2011, pursuant to applicant’s assertion of its bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act. Ser. No. 85262439 2 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 marks SOULMATE and SOULMATE. BECOME ONE. AGAIN. both registered on the Principal Register by the same entity for “jewelry,” that as used in connection with applicant’s goods it is likely to cause confusion or mistake or to deceive.2 We affirm the refusal to register. 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 2 Registration No. 3306078 issued October 9, 2007. Registration No. 3502298 issued on September 16, 2008. Ser. No. 85262439 3 Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). To state the obvious, applicant’s “jewelry” is identical to the “jewelry” identified in the cited registrations. Applicant does not argue otherwise. Further, because as identified the goods are legally identical, they must be presumed to travel in the same channels of trade and be sold to the same classes of consumers. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). These du Pont factors favor a finding of likelihood of confusion. The next du Pont factor we consider is the similarity of the marks. Because the additional wording in the cited SOULMATE. BECOME ONE. AGAIN. mark arguably contains additional points of difference with applicant’s mark, we confine our analysis to the issue of likelihood of confusion between applicant’s mark and the cited registration for the mark SOULMATE. That is, if confusion is likely between those marks, there is no need for us to consider the likelihood of confusion with the cited registration for SOULMATE. BECOME ONE. AGAIN., while if there is no likelihood of confusion between applicant’s Ser. No. 85262439 4 mark and SOULMATE, then there would be no likelihood of confusion with the SOULMATE. BECOME ONE. AGAIN. mark. See In re Max Capital Group Ltd., 93 USPQ2d at 1245. There are certain principles that we must keep in mind. First, when marks would appear on virtually identical goods or services, as they do here, the degree of similarity necessary to support a conclusion of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Second, similarity in any one of the elements of sound, appearance, meaning, or commercial impression is sufficient to support a determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca- Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion”); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (“In appropriate cases, a finding of similarity as to any one factor (sight, sound or meaning) alone ‘may be sufficient to support a holding that the marks are confusingly similar’”) (citations omitted)). Therefore, even if the marks had different meanings, it would not necessarily mean there was no likelihood of confusion. Third, the test is not whether the marks can be distinguished when subjected to a side-by- Ser. No. 85262439 5 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 goods or 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. In re Association of the United States Army, 85 USPQ2d 1264, 1268 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). With these principles in mind, we turn to the marks at issue. Applicant’s SOLEMATES mark is virtually identical in sound to registrant’s SOULMATE mark. It has long been held that the difference between plural and singular word forms is of little consequence in comparing marks under Trademark Act § 2(d). See, e.g., Wilson v. Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957); Chicago Bears Football Club v. 12th Man/Tenn. LLC, 83 USPQ2d 1073, 1077 (TTAB 2007). There are also similarities in the appearance of the marks, in that both have the same second syllable (MATE/MATES), while the first syllable of both consists of four letters with the first two letters and one of the remaining two letters all being the same. Ser. No. 85262439 6 With regard to connotation, applicant argues that the term SOULMATE comprising registrant’s mark connotes “one of two persons esp. of opposite sex temperamentally suited to each other”3 whereas its mark “is more suggestive of footwear and footwear accessories (and, indeed, the business of the applicant is largely involved with the marketing of footwear accessories).4 We agree with applicant’s characterization of the meaning of the mark SOULMATE. We further agree that applicant’s spelling of its SOLEMATES mark adds a footwear-related twist to the term “soul mates.” Nonetheless, because applicant’s mark would readily be understood as being a play on the term “soul mates,” the connotations and commercial impressions of the marks are related and, in any event, more similar than dissimilar. Thus, although there are some differences in the marks, these differences are not sufficient to distinguish the marks. This du Pont factor favors a finding of likelihood of confusion. As for the strength of the SOULMATE mark, applicant has introduced evidence from commercial internet websites and argued at length that “the term ‘soulmate’ (in the 3 Applicant’s brief, p. 8. 4 Id. Ser. No. 85262439 7 singular or plural form, one word or two word form) was used generically throughout the jewelry trade to refer to a type of jewelry… .”5 In this regard, we point out this is an ex parte proceeding, and applicant is not permitted to overcome a refusal by arguing that the mark in a cited registration is merely descriptive or generic. The Court stated in In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997): Dixie's argument that DELTA is not actually used in connection with restaurant services amounts to a thinly-veiled collateral attack on the validity of the registration. It is true that a prima facie presumption of validity may be rebutted. See Dan Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 1014, 202 USPQ 100, 105 (CCPA 1979). However, the present ex parte proceeding is not the proper forum for such a challenge. Id. ("One seeking cancellation must rebut [the prima facie] presumption by a preponderance of the evidence."); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (CCPA 1970); TMEP Section 1207.01(c)(v) (1993); 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition Section 23.24[1] [c] (3d ed. 1996). In fact, Cosmetically Yours held that “it is not open to an applicant to prove abandonment of [a] registered mark" in an ex parte registration proceeding; thus, the "appellant's argument … that [a registrant] no longer uses the registered mark … must be disregarded." 424 F.2d at 1387,165 USPQ at 517; cf. In re Calgon Corp., 435 F.2d 596, 598, 168 USPQ 278, 280 (CCPA 1971) (applicant's argument that its use antedated a registered mark was effectively an improper collateral attack on the validity of the registration, which should have been made in formal cancellation proceedings). 5 Id. at 6, emphasis in original. Ser. No. 85262439 8 See also Hecon Corporation v. Magnetic Video Corporation, 199 USPQ 502, 507 (TTAB 1978) (“Applicant has also contended that the term ‘COPYCORDER’ is ‘particularly descriptive’ of opposer's goods and thus is entitled to but a limited scope of protection. Aside from the fact that the term ‘COPYCORDER’ is, in our opinion, only suggestive as applied to either opposer's or applicant's goods, the assertion of descriptiveness constitutes a collateral attack upon the validity of opposer's pleaded registration and as such cannot be entertained herein in the absence of a counterclaim to cancel the same”). Therefore, inasmuch as the cited mark is registered on the Principal Register, we must assume that it is at least suggestive and we cannot entertain applicant’s collateral attack that the registered mark is descriptive or generic as applied to its jewelry. We do conclude from the third-party internet evidence that SOULMATE has a suggestive meaning and therefore the cited registration is not entitled to a broad scope of protection. However, it is well-settled that even suggestive or weak marks are entitled to protection from the use of a very similar mark for legally identical goods. See In re Chica Inc., 84 USPQ2d 1845, 1850 (TTAB 2007), quoting In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982): Ser. No. 85262439 9 if the word CORAZON, and its English translation, was considered to be highly suggestive of jewelry, it nonetheless is entitled to protection from the use of a very similar mark on jewelry products. “[E]ven weak marks are entitled to protection against registration of similar marks, especially identical ones, for related goods and services.” To the extent that any other du Pont factors are relevant, we treat them as neutral. In view of the above discussion, and our finding that the factors of the similarity of marks, and the legally identical goods and trade channels, all favor a finding of likelihood of confusion, and that any other du Pont factors are neutral, we find that applicant’s mark for its goods is likely to cause confusion with the mark registered under Registration No. 3306078, and affirm the refusal of registration made pursuant to Section 2(d). Decision: The refusal of registration pursuant to Section 2(d) is affirmed.