Soulful Environments, LLC

Trademark Trial and Appeal BoardMay 25, 2016

No. 86253504 (T.T.A.B. May. 25, 2016)

This Opinion is Not a Precedent of the TTAB Mailed: May 25, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Soulful Environments, LLC _____ Serial No. 86253504 _____ Garrett M. Weber of Lindquist & Vennum LLP for Soulful Environments, LLC. April K. Roach, Trademark Examining Attorney, Law Office 115, John Lincoski, Managing Attorney. _____ Before Taylor, Adlin, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: Soulful Environments, LLC (“Applicant”) seeks registration on the Principal Register of the mark SOULFUL ENVIRONMENTS, with ENVIRONMENTS disclaimed, for “Interior design services, namely, selection of art, aromatherapy, cymatics, lighting, animal assisted interactions, and nature-based therapeutics; Serial No. 86253504 - 2 - exterior design services, namely, landscape lighting design, and exterior architectural design in the nature of selection of art, aromatherapy, cymatics, lighting, and animal-assisted interaction features” in International Class 42.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark SOULFULHOTELS.COM in standard characters for services that include “design of interior decor” and “architectural services” in International Class 42.2 After the Examining Attorney made the refusal final, Applicant appealed and requested reconsideration. The Examining Attorney denied the request for reconsideration, and the appeal was resumed. We affirm the refusal to register. I. Likelihood of Confusion The determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry 1 Application Serial Number 86253504 was filed April 16, 2014 based upon Applicant’s allegation of its bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 2 Registration Number 4541195, issued June 3, 2014. Serial No. 86253504 - 3 - mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [and services] and differences in the marks A. Relatedness of the Services and Trade Channels We first address the second and third du Pont factors, the similarity or dissimilarity of the services and channels of trade. We assess whether the degree of relatedness of the services rises to such a level that consumers would mistakenly believe Applicant’s services and those in the cited registration emanate from the same source. We must focus on the services as identified in the application and cited registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Though worded slightly differently, both the subject application and the cited registration identify interior decorating or design services. “Décor” is defined as “the way that a room or the inside of a building is decorated.”3 Therefore, the services in the cited registration include designing the manner in which the interior of a building or room will be decorated. Applicant’s recitation explicitly indicates that its interior design services include the “selection of art … [and] lighting,” which certainly may form part of the way a room or inside of a building is decorated. A broad recitation such as “design of 3 Merriam-Webster Online Dictionary, http://www.merriam-webster.com/dictionary/decor. © 2015 Merriam-Webster, Inc. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Serial No. 86253504 - 4 - interior décor” in the cited registration is presumed to encompass all services of the type described. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Thus, the services are identical in part. Applicant argues that it narrowed its identification and sufficiently distinguished its services from those in the cited registration. In particular, Applicant claims that its interior design services do not include design of interior décor, and that while Applicant selects items for interiors, selecting interior décor items is somehow not encompassed by Registrant’s services involving design of décor. We consider this alleged distinction mere semantics. As indicated above, the design of interior décor referred to in the cited registration equates to decorating interiors and therefore includes selecting the same types of items referred to in Applicant’s recitation. Even putting aside that the recitations are identical in part, the record also establishes that Applicant’s interior design services are highly related to the architecture services in the cited registration. The evidence shows that a single source frequently offers both services under the same mark. The Examining Attorney provided numerous examples of the same entity providing both interior design and architecture services under the identical mark. For example, TruexCullins Home’s website refers to its services as “architecture + interior design.”4 CG and S Design- Build’s website refers to its “residential architecture” and “interior design” services.5 Studio Red Architects’ website promotes its “Architecture” services along with its 4 November 2, 2015 Office Action at 2-3. 5 May 1, 2015 Office Action at 7. Serial No. 86253504 - 5 - “Interior Design” services.6 The website even states that the interior design industry “overlaps with many related fields, particularly architecture.”7 Both the websites of Dianna WONG and Montgomery Roth identify the promoted services as including “Architecture” and “Interior Design.”8 Similarly, Carol Kurth Architecture + Interiors advertises both services as part of its “multidisciplinary design approach.”9 The same applies for the online promotion of LDa Architecture & Interiors, which helps “guid[e] a homeowner through the complex design and construction process” by providing “sustainable architecture and interior design services.”10 Thus, the evidentiary record proves that architecture and interior design services are highly related. Turning next to the channels of trade, we presume, as we must, that because the services described in the subject application and the cited registration are identical in part, we must presume that they travel through the same channels of trade to the same class of purchasers, considerations under the third du Pont factor. See American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). Moreover, Applicant’s services and those in the cited registration, for which both recitations are unrestricted, are presumed to move 6 Id. at 9-10. 7 Id. at 10. 8 November 2, 2015 Office Action at 11-15. 9 Id. at 18. 10 Id. at 22-24. Serial No. 86253504 - 6 - in all channels of trade normal for such services and are available to all potential classes of ordinary consumers. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the identification is unrestricted, “we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods”); In re Jump Designs LLC, 80 USPQ2d at 1374; In re Elbaum, 211 USPQ at 640. In addition, for the highly related architectural services and interior design services, the Internet evidence referred to above shows that these services are marketed together to the same consumers and are often described as being components of the same projects.11 Thus, the second and third du Pont factors strongly weigh in favor of likely confusion. B. Strength of the Cited Mark Applicant attempts to minimize the significance of the term common to both marks, SOULFUL, by asserting that it is weak. In an effort to show the alleged weakness, Applicant points to two sets of third-party registrations for marks that include SOULFUL, along with other matter, for goods and services that are identical or similar to one another. Specifically, Applicant cites one set of third-party registrations co-existing: SOULFUL HYMNSPIRATIONS and design for “CD’s featuring music;” SOULFUL SOUNDS for “prerecorded CD’s and audio cassettes 11 See, e.g., id.; id. at 18 (“The firm’s multidisciplinary approach includes all aspects of the architectural process: . . . preliminary design, . . . architectural detailing, and interior design”); id. at 9 (“provide integrated architectural and interior design services”); May 1, 2015 Office Action at 8 (offering, in connection with residential renovation, a “single point of responsibility” for architectural services and interior design). Serial No. 86253504 - 7 - featuring Christian music;” and SOULFUL AWAKENINGS for, inter alia, “Compact discs featuring chakra crystal bowls sound vibration for mediation.”12 Next, Applicant refers to a pair of third-party registrations co-existing for SOULFUL PROPRIETOR for “Business assistance, advisory and consulting services in the field of metaphysics” and SOULFUL EXCELLENCE for “business consulting services.”13 Third-party registration evidence may show that a term carries a highly suggestive connotation in the relevant industry and therefore may be considered somewhat weak. Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). However, Applicant’s third-party registration evidence does not involve the same services as are in the involved application or cited Registration, or even related services. Rather, the third-party registrations identify goods and services having nothing to do with architectural or interior design services. Thus, unlike in Juice Generation and Jack Wolfskin, where the third-party evidence involved the very same services and goods at issue, here the third-party registration evidence is far afield from the relevant industry and therefore lacks persuasive force. See In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (“In this case, the third-party registrations are of limited probative value because the goods identified in the registrations appear to be in fields which are far removed from trailers and recreational vehicles”). Therefore, 12 October 28, 2015 Response to Office Action at 2-7. 13 Id. at 8-11. Serial No. 86253504 - 8 - considering the evidence in its entirety, we conclude that it fails to support the alleged weakness of “Soulful” in connection with architectural or design of interior décor services. C. Similarity of the Marks With respect to the marks, we must 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 test assesses not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the services offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). Moreover, where, as here, the services are identical in part, the degree of similarity of the marks necessary to find likelihood of confusion need not be as great. Coach Servs., Inc., 101 USPQ2d at 1722; Viterra, 101 USPQ2d at 1908 (citing Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)). Applicant’s proposed mark is SOULFUL ENVIRONMENTS in standard characters, with ENVIRONMENTS disclaimed, and the mark in the cited registration is SOULFULHOTELS.COM in standard characters. Both marks contain the identical dominant wording SOULFUL, a term which is not weak in connection Serial No. 86253504 - 9 - with the relevant services. Thus, the marks share and begin with a significant visual and phonetic similarity. “[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). See also Palm Bay Imports Inc., 73 USPQ2d at 1692. We further find that SOULFUL dominates the mark in the subject application because ENVIRONMENTS is disclaimed as descriptive,14 and consumers would not be inclined to rely on the disclaimed wording as source indicating for services focused on interior “environments.” See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985). Given the disclaimer and evidence of descriptive use, we do not agree that the impression of ENVIRONMENTS in Applicant’s mark is so nuanced, as Applicant asserts, that it “allows consumers to know that the Applicant’s services focus[] on creating specific moods and feelings in interior and exterior environments.”15 Turning to the cited mark, while it contains the additional wording HOTELS.COM, in the context of the architectural and interior design services at issue, HOTELS would likely be perceived as a descriptive reference to the specific type of building or “environment” for which the architectural or interior design 14 See also August 4, 2014 Office Action at 8-14 for evidence showing the use of “environments” or “environmental design”; May 1, 2015 Office Action at 10 (“creating an interior environment of aesthetic value” and “designing an environment that influences the client’s business culture”) 15 9 TTABVUE at 4. Serial No. 86253504 - 10 - services may be provided.16 The .COM portion of the cited mark appears merely to signify the top level domain for commercial entities, and in this mark, .COM contributes to the impression of the mark as an Internet address, as Applicant asserts in its brief.17 Nonetheless, except in exceptional circumstances not present here, .COM lacks source-identifying significance for purposes of distinguishing marks. See In re Oppedahl & Larson LLP, 373 F.3d 1171, 1177 (Fed. Cir. 2004). Thus, just as in Applicant’s mark, SOULFUL dominates the cited mark. See Nat’l Data Corp., 224 USPQ at 751 (while marks must be compared in their entireties, “there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of the mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties”). Although the overall commercial impressions of the two marks are not identical, they are consistent with a single source. We find that consumers likely would perceive that the provider of SOULFUL ENVIRONMENTS interior design services also uses SOULFULHOTELS.COM as a reference to its online presence or interior design and architecture services focused on hotels. Given the similarity in sight, sound, and commercial impression of the marks in their entireties, the first du Pont factor weighs in favor of likely confusion. 16 See, e.g., November 2, 2015 Office Action at 12 (Montgomery Roth Architecture & Interior Design webpage noting that it offers architectural services in connection with hotel design). 17 9 TTABVUE at 4. Serial No. 86253504 - 11 - II. Conclusion Based on the similarity of the marks, the identical services at issue, and the identical trade channels, we find that Applicant’s mark is likely to cause confusion with the mark in the cited registration. Decision: The refusal to register Applicant’s mark is affirmed.