Tarek K. Alattarv.Attar Mist LLC

Trademark Trial and Appeal Board

Jan 28, 2022

92071498 (T.T.A.B. Jan. 28, 2022)

This Opinion is Not a Precedent of the TTAB Mailed: January 28, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Tarek K. Alattar v. Attar Mist LLC _____ Cancellation No. 92071498 _____ Heena N. Kampani of the Law Office of Heena N. Kampani for Tarek K. Alattar Keesonga Gore of Minott Gore, P.A. for Attar Mist LLC _____ Before Cataldo, Lynch, and Pologeorgis, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background and Evidentiary Record Petitioner Tarek K. Alattar seeks to cancel Registration No. 5736849 for the mark ATTAR MIST in standard characters owned by Respondent Attar Mist LLC.1 The 1 The challenged registration issued on April 30, 2019. Cancellation No. 92071498 - 2 - registration issued on the Principal Register under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), with a disclaimer of MIST for goods in International Class 3 identified as: Bath oils; Essential oils; Fragrances; Fragrances for personal use; Incense; Lotions for cosmetic purposes; Massage lotions; Massage oils; Perfume oils; Perfumes; Room fragrances; Body lotion; Cosmetic bath salts; Facial lotion; Skin lotion While the Petition to Cancel included numerous grounds for cancellation, the only one Petitioner pursued at trial is likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The other pleaded claims (mere descriptiveness and fraud) that Petitioner did not address in his briefing are waived. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1426 n.3 (TTAB 2013) (opposer’s pleaded descriptiveness claim not argued in brief deemed waived); Knight Textile Corp. v. Jones Inv. Co., 75 USPQ2d 1313, 1314 n.4 (TTAB 2005) (pleaded dilution ground not pursued on brief deemed waived). Petitioner’s Section 2(d) ground relies on his prior registration of the mark for a variety of goods, including “essential oils” and “perfumery” in International Class 3.2 The registration states that “[t]he English translation of ‘ALATTAR’ in the mark is PERFUMER,” and “[t]he non-Latin 2 Registration No. 3862764 issued on the Principal Register on October 19, 2010 and has been maintained. 9 TTABVUE 6-7 (registration), 12 (status and title testimony). Cancellation No. 92071498 - 3 - characters in the mark transliterate to ‘ALATTAR’ and this means PERFUMER in English.” The registration includes a disclaimer of both “‘ALATTAR’ and the non- Latin characters that transliterate to ‘ALATTAR’ for International Class 3.” Respondent’s Answer denied the salient allegations in the petition, and asserted a sizable list of “Affirmative Defenses.”3 Respondent did not pursue the purported affirmative defenses as it did not submit any evidence or file a brief in this case. We therefore consider any affirmative defenses waived. See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.). The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the challenged registration. Petitioner also submitted a notice of reliance and a testimony affidavit of Petitioner Tarek Kudsi Alattar.4 II. Entitlement to a Statutory Cause of Action5 Entitlement to a statutory cause of action is a threshold issue in every inter partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020), reh’g en banc denied 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert. denied, __ S.Ct. __, 2021 WL 4507693 3 4 TTABVUE. 4 In an order dated April 22, 2021, the Board accepted Petitioner’s late-filed notice of reliance, which also includes Petitioner’s testimony affidavit. See 14 TTABVUE (order); 9 TTABVUE (notice of reliance). 5 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain equally applicable. See Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020). Cancellation No. 92071498 - 4 - (2021) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-26, 109 USPQ2d 2061, 2067 n.4 (2014)). A party in the position of plaintiff may petition to cancel a registration when the cause of action is within the zone of interests protected by the statute, 15 U.S.C. § 1064, and the plaintiff has a reasonable belief in damage that is proximately caused by the continued registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020), cert. denied, ___ U.S. ___ (2021). Petitioner’s pleaded registration, for which he has proven status and title, establishes his statutory entitlement to this Section 2(d)- based cancellation that is not wholly without merit. See Lipton Indus. Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); see also Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). III. Priority Petitioner has priority. The September 4, 2009 filing date of the application that matured into Petitioner’s pleaded registration precedes the June 19, 2017 filing date of the application that matured into Respondent’s challenged registration. See Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (a petitioner who owns a registration may rely on it to establish constructive first use as of the application filing date). Petitioner also submitted testimony that he has used Cancellation No. 92071498 - 5 - his mark in the United States on the relevant goods since 2008.6 Respondent has not alleged or proven any prior use. IV. 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. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A likelihood of confusion analysis often focuses on the similarities between the marks and the similarities between the goods. 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.”). Petitioner bears the burden of proving his claim of likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. A. The Goods, Trade Channels and Classes of Consumers Our comparison of the goods under the second DuPont factor must be based on the identifications in the respective registrations. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. 6 9 TTABVUE 12 (Alattar Declaration). Cancellation No. 92071498 - 6 - Cir. 1990). A finding of relatedness must be made with respect to at least one item in Respondent’s single-class registration to establish relatedness of the goods. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). As identified, Petitioner’s and Respondent’s goods overlap as to perfume and essential oils. Thus, the goods are identical in part, and we therefore presume that they travel through some of the same channels of trade to the same classes of purchasers, considerations under the third DuPont factor. See In re Viterra Inc., 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); see also American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011) (where the services were legally identical, “the marketing channels of trade and targeted classes of consumers and donors are the same”). The second and third DuPont factors weigh in favor of likely confusion. B. The Pleaded Mark Before we turn to the similarity of the marks, we briefly address Petitioner’s argument that although the disclaimed wording in his mark “has a meaning of Perfumer in English,” Petitioner’s use of his mark in commerce for more than five years and his submission of a combined declaration of use and incontestability under Cancellation No. 92071498 - 7 - Trademark Act Sections 8 and 15, 15 U.S.C. §§ 1058 & 1065 mean that “ALATTAR has acquired secondary meaning and thus [is] entitled to broad protection.”7 As explained above, Petitioner’s mark registered on the Principal Register without a Section 2(f) claim and therefore the mark as a whole was treated as inherently distinctive. However, it is significant that the registration includes a disclaimer of all the wording in the mark, indicating that Petitioner does not claim exclusive rights in the words except in the mark as a whole. [A] disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark. Sprague Elec. Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats. 1954). Thus, Petitioner’s argument that the so-called incontestable status of his registration entitles him to claim secondary meaning and broad protection in the term ALATTAR alone is misplaced. Through the disclaimer, Petitioner conceded that his registration does not entitle him to exclusive rights in the wording “‘ALATTAR’ and the non-Latin characters that transliterate to ‘ALATTAR’” standing alone. The point of a disclaimer is to make clear that a party registering a composite mark that includes an unregistrable component, such as descriptive wording, is not thereby 7 11 TTABVUE 25 (Petitioner’s Brief). Cancellation No. 92071498 - 8 - abridging the right of others to use the wording. In re Pencils Inc., 9 USPQ2d 1410, 1411 (TTAB 1988). C. Similarity of the Marks We next turn to the comparison of Petitioner’s mark and Respondent’s standard character mark ATTAR MIST “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). 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 goods offered under the respective marks is likely to result. Cai v. Diamond Hong, 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); Coach Servs., 101 USPQ2d at 1721; see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). As Petitioner has urged, we also bear in mind that, given the identical-in-part goods, Cancellation No. 92071498 - 9 - “the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). Nonetheless, overall we do not find the marks sufficiently similar for this factor to weigh in favor of likely confusion. Respondent’s mark, ATTAR MIST, consists of two English-language words. We take judicial notice that “attar” appears in English language dictionaries and is defined as “a fragrant essential oil (as from rose petals)”8 and “a fragrant essential oil or perfume obtained from flowers: attar of roses.”9 We find that Respondent’s mark conveys the connotation and commercial impression of a floral-scented essential oil available as a fine spray. The registration issued with a claim of acquired distinctiveness as to the entire mark, and a disclaimer of MIST. Petitioner’s registration, on the other hand, does not contain English-language words. The registration indicates that the two literal elements of the mark consist of, first, stylized Arabic letters that transliterate to ALATTAR, and second, the term ALATTAR appearing in Latin characters beneath the Arabic.10 The registration further states that both the Arabic and transliterated words share the same translation provided by Petitioner as “perfumer,” which we note is defined as “one 8 Merriam-webster.com, accessed January 26, 2022. The Board may take judicial notice of dictionary definitions, including online dictionaries. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). We exercise our discretion to do so here. 9 American Heritage Dictionary, ahdictionary.com, accessed January 26, 2022. 10 9 TTABVUE 7. Cancellation No. 92071498 - 10 - who makes or sells perfumes.”11 As to the relevant goods, “perfumer” is highly descriptive, and Petitioner has disclaimed both the Arabic and the transliteration. We find that Petitioner’s mark as a whole, , which includes the design element Petitioner described as “a silhouette of a man with his arm held up,” has a connotation and commercial impression of a person who makes perfume. The design appears to depict such a perfumer, reinforcing the sense of the descriptive wording in the mark. Thus, we find that Respondent’s mark and Petitioner’s mark have different meanings and commercial impressions. While in a very broad sense, both relate to scents, Respondent’s mark uses English wording and refers to a specific type of essential oil in a particular form, and Petitioner’s mark uses Arabic wording and refers to and depicts a person who makes perfume. These connotations and commercial impressions are dissimilar. We reject Petitioner’s argument that the marks share the same connotation because ALATTAR and ATTAR are “essentially the same in Arabic.”12 Given that ATTAR is an English word and Respondent’s mark includes another English word as the only other element, we see no reason that U.S. consumers would translate ATTAR 11 American Heritage Dictionary, ahdictionary.com, accessed January 26, 2022; see also Merriam-webster.com, accessed January 26, 2022 (“one that makes or sells perfumes”). 12 11 TTABVUE 24 (Petitioner’s Brief). Cancellation No. 92071498 - 11 - as an Arabic term and attribute a different meaning to it than its ordinary English language definition. Visually and phonetically, we also find the marks dissimilar. Although they share the common lettering ATTAR, Petitioner’s mark embeds this lettering in the term ALATTAR, and Petitioner’s own description of his mark refers to ALATTAR as a single word (“The mark consists of a stylized Arabic word, the word ‘ALATTAR’ in stylized lettering….”). Petitioner’s mark also contains Arabic lettering as the top and largest element in the mark, as well as a prominent design feature that, along with the dark background, distinguishes the mark in appearance from Respondent’s mark, which contains the additional word MIST. See In re Hamilton Bank, 222 USPQ 174, 179 (TTAB 1984) (when the word portion of a mark is descriptive, the presence of a design may be a more significant factor). Petitioner’s mark would be pronounced as ALATTAR ALATTAR, while Respondent’s mark would be pronounced as ATTAR MIST. Considered in their entireties, the marks look and sound different. In the present case, in arguing the similarity of the marks, Petitioner relies only on the descriptive word ALATTAR that he disclaimed in his registration. The extreme weakness of the literal portion of his mark and Petitioner’s submission of a disclaimer renouncing exclusive rights in ALATTAR except in his mark as a whole are significant in this comparison of the marks. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.”) (internal quotation omitted); Cancellation No. 92071498 - 12 - see also In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks). As the Court of Customs and Patent Appeals, the predecessor to the U.S. Court of Appeals for the Federal Circuit, stated in Sure-Fit Products Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958): It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights. The essence of all we have said is that in the former case there is not the possibility of confusion that exists in the latter case. By disclaiming all the wording in its mark, Petitioner has conceded that he does not have exclusive rights in the wording ALATTAR alone, thereby effectively acknowledging the right of others to use the disclaimed matter as long as other similarities do not bring the use too close to Petitioner’s mark as a whole. Except in that circumstance, the right of others who may wish to use the disclaimed term is not abridged. Pencils Inc., 9 USPQ2d at 1411 (“the basic purpose of a disclaimer is to make of record, if it might otherwise be misunderstood, that a significant element of a composite mark is not being exclusively appropriated, apart from the composite”). Given that Petitioner does not advance any similarities between the marks at issue other than the disclaimed term, Petitioner’s position is unavailing. This DuPont factor weighs strongly against a likelihood of confusion. Cancellation No. 92071498 - 13 - V. Conclusion Although the identical-in-part goods and the overlapping channels of trade and classes of consumers weigh in favor of likely confusion, in this case, Respondent’s mark is so dissimilar to Petitioner’s pleaded mark, and the common element between them is so weak that no likelihood of confusion exists. See Kellogg Co. v. Pack’em Ent. Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) (single DuPont factor of the dissimilarity of the marks outweighed the other relevant factors, and was therefore dispositive on the issue of likelihood of confusion); Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998) (“one DuPont factor may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks”); Omega SA v. Alpha Phi Omega, 118 USPQ2d 1289, 1293 (TTAB 2016). Decision: The petition to cancel is denied.