Sunshine Mills, Inc.

Trademark Trial and Appeal BoardFeb 26, 2019

EX (T.T.A.B. Feb. 26, 2019)

Mailed: February 26, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Sunshine Mills, Inc. _____ Serial No. 87305995 _____ Sean Collin and Meredith R. Phillips, IPWatch Corporation, for Sunshine Mills, Inc. Justin Severson, Trademark Examining Attorney, Law Office 111, Chris Doninger, Managing Attorney. _____ Before Bergsman, Shaw, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Applicant Sunshine Mills, Inc. seeks to register on the Principal Register the mark FARMHOUSE NATURALS, in standard characters and with “NATURALS” disclaimed, for “pet food and pet treats” in International Class 31.1 The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the mark 1 Application Serial No. 87305995 was filed January 18, 2017, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intention to use the mark in commerce. Applicant’s amendment claiming first use anywhere and first use in commerce as of June 26, 2017 was accepted on October 8, 2018. This Opinion Is Not a Precedent of the TTAB Serial No. 87305995 - 2 - FARM HOUSE BARKERY, registered on the Principal Register in standard characters for “dog treats” in International Class 31, as to be likely to cause confusion, to cause mistake, or to deceive.2 After the Examining Attorney made the refusal final, Applicant appealed to this Board and requested reconsideration. After reconsideration was denied, the appeal resumed. We affirm the refusal to register. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of 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, however, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A likelihood of confusion must be found as to the entire class if confusion is likely for any item within the identification for that class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re C.H. Hanson Co., 116 USPQ2d 1351, 1355 (TTAB 2015). 2 Registration No. 4659480, issued December 23, 2014. Serial No. 87305995 - 3 - A. Similarity of the Goods, Customers, and Channels of Trade We begin with the second and third du Pont likelihood of confusion factors, the similarity of the goods and channels of trade. Applicant’s goods are “pet food and pet treats,” and Registrant’s goods are “dog treats.” Registrant’s “dog treats” are encompassed within Applicant’s “pet treats.” Thus, these goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018); In re Hughes Furn. Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015). There are no limitations as to channels of trade or classes of purchasers in either the application or cited registration. Therefore, we must presume not only that Applicant’s “pet treats” and Registrant’s “dog treats” move in all channels of trade normal for those goods, but also that these goods travel in the same channels of trade and are offered to the same classes of purchasers. See, e.g., In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016). Applicant argues that its goods actually travel in “distinctly different channels of trade” from Registrant’s goods. Appeal Brief, 8 TTABVUE 11. This argument is not persuasive. We must base our decision on the identification of goods set forth in the application and cited registration and may not read restrictions into those descriptions based on extrinsic evidence: The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed. Serial No. 87305995 - 4 - Octocom Sys., Inc. v. Hous. Comps. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom). The second and third du Pont factors weigh heavily in favor of a finding that confusion is likely. B. Similarity of the Marks Next, we address the first du Pont factor, which focuses on “‘[t]he similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). The similarity of the marks is determined based on the marks in their entireties, so our analysis is not predicated on dissecting the marks into their various components. Hanson, 116 USPQ2d at 1353. On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Because some of the goods are legally identical, the degree of similarity between the marks Serial No. 87305995 - 5 - necessary to support a determination that confusion is likely declines. Viterra, 101 USPQ2d at 1908; In re RiseSmart Inc., 104 USPQ2d 1931, 1935 (TTAB 2012). Applicant’s mark is FARMHOUSE NATURALS, with “NATURALS” disclaimed, and the cited mark is FARM HOUSE BARKERY. In this appeal, the lead element in the marks has a position of prominence, especially in Applicant’s mark because the word “NATURALS” is descriptive and has been disclaimed; it is likely to be noticed and remembered by consumers and so to play a dominant role in the mark. See, e.g., Detroit Athletic, 128 USPQ2d at 1049 (“The identity of the marks’ initial two words is particularly significant because consumers typically notice those words first.”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (stating that, “upon encountering each mark, consumers must first notice this identical lead word”). Here, the first term or phrase in each mark is the legally identical FARM HOUSE or FARMHOUSE.3 Applicant submitted copies of registrations for third-party marks for dog food and pet treats that incorporate the word “FARM,”4 but there is no evidence of any use of FARM HOUSE or FARMHOUSE by third parties for similar goods or services. 3 The presence or absence of a space does not significantly distinguish the commercial impression of these terms because consumers will still recognize the individual components. See, e.g., In re ING Direct Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011) (finding “Person2Person Payment” generic despite deletion of spaces); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1025 (TTAB 2009) (finding that DESIGNED TO SELL creates the same commercial impression as DESIGNED2SELL). 4 See October 13, 2017 Response to Office Action, Exhibit C, TSDR 30-205. Serial No. 87305995 - 6 - Each mark contains an additional term (NATURALS and BARKERY). Because of its descriptive nature in association with the identified goods, consumers are unlikely to accord source-identifying significance to the disclaimed word NATURALS in Applicant’s mark FARMHOUSE NATURALS. In Registrant’s mark, FARM HOUSE BARKERY, the coined term BARKERY is distinctive and likely to carry some significance. These additional terms do distinguish the marks somewhat. Nonetheless, likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding descriptive or distinctive matter. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (affirming TTAB finding that applicant’s mark ML is likely to be perceived as a shortened version of registrant’s mark ML MARK LEES (stylized) when used on the same or closely related skin-care products); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (affirming holding of likely confusion between VEUVE ROYALE for sparkling wine and VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN for champagne). Because of the shared lead term, Applicant’s and Registrant’s marks, considered in their entireties, are similar in appearance, sound, and meaning. With respect to Applicant’s evidence and arguments concerning actual use of the marks on packaging by it and by Registrant, see Appeal Brief, 8 TTABVUE 7-8, such comparisons are immaterial to this appeal. Because the cited mark is registered in Serial No. 87305995 - 7 - standard characters, it is not limited to any particular font style, size, or color. Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a); Mighty Leaf Tea, 94 USPQ2d at 1260. Bearing in mind that less similarity is necessary where the identified goods are legally identical in part, we find the marks, considered in their entireties, sufficiently similar in commercial impression that persons who encounter them would be likely to assume a connection between Applicant and Registrant. C. Absence of Actual Confusion Finally, we consider Applicant’s argument that it is unaware of any instances of actual confusion although the parties’ marks have coexisted for nearly 14 months. See Appeal Brief, 8 TTABVUE 12. In the ex parte context, lack of evidence of actual confusion carries little weight. Majestic Distilling Co., 65 USPQ2d at 1205; In re Integrated Embedded, 120 USPQ2d 1504, 1515 (TTAB 2016). Also, fourteen months is a relatively short period of coexistence. Cf. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1163-64 (Fed. Cir. 2019) (discussing lack of evidence of actual confusion in more than 40 years of concurrent use in the same geographic market). The absence of actual confusion is not probative, moreover, unless it is accompanied by evidence demonstrating that in light of the parties’ actual business activities, confusion, if likely, would have occurred. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). There is no such evidence here. Conclusion We have considered all the evidence of record and Applicant’s arguments as they pertain to the relevant du Pont likelihood of confusion factors. To the extent that any Serial No. 87305995 - 8 - other factors for which no evidence was presented by Applicant or the Examining Attorney may nonetheless be applicable, we treat them as neutral. We have found that the first three du Pont factors weigh in favor of a finding that confusion is likely, with none weighing against. We conclude that Applicant’s mark is likely to cause confusion with the mark in cited Registration No. 4659480 when used in association with the goods identified in the application. Decision: The refusal to register Applicant’s mark is affirmed.