The Artsmiths, LLC

Trademark Trial and Appeal BoardMay 10, 2016

No. 86308883 (T.T.A.B. May. 10, 2016)

This Opinion is not a Precedent of the TTAB Mailed: May 10, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re The Artsmiths, LLC _____ Serial No. 86308883 _____ Bryan H. Opalko of Buchanan Ingersoll & Rooney PC, for The Artsmiths, LLC. Natalie L. Kenealy, Trademark Examining Attorney, Law Office 104, Dayna Browne, Managing Attorney. _____ Before Seeherman, Kuczma and Masiello, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: The Artsmiths, LLC (Applicant) has appealed from the final refusal of the Trademark Examining Attorney to register THE ARTSMITHS in standard characters on the Principal Register for retail store services featuring handmade artisan products in the nature of original artwork in a wide variety of mediums; online retail store services featuring handmade artisan products in the nature of artwork in a wide variety of mediums (Class 35).1 1 Application Serial No. 86308883, filed on June 13, 2014, based on Section 1(b) of the Trademark Act (intent-to-use). Serial No. 86308883 - 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 mark ARTSMITH and design, as shown below, registered for jewelry,2 that, if used in connection with Applicant’s identified services, it is likely to cause confusion, mistake or to deceive. We affirm the refusal to register. I. Evidentiary Issue Before proceeding to the merits of the refusal, we address an evidentiary matter. With its appeal brief Applicant submitted, for the first time, Exhibits E and F. In her brief, the Examining Attorney has objected to these exhibits. 6 TTABVUE 3. The objection is well taken. Trademark Rule 2.142(d) provides that the record in the application should be complete prior to the filing of an appeal, and that the Board will ordinarily not consider additional evidence filed with the Board after the appeal is filed. Accordingly, we have not considered this evidence, or the arguments based on them. 2 Registration No. 3381332, issued February 12, 2008; Section 8 affidavit accepted. The colors brown and turquoise are claimed as a feature of the mark. Serial No. 86308883 - 3 - II. Analysis 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, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 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 similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). We therefore turn first to a consideration of the marks. Applicant’s mark is THE ARTSMITHS; the cited mark is ARTSMITH and design. Marks must, of course, be compared 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, 1692 (Fed Cir. 2005). “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) (citation omitted). Applicant, however, focuses on rather minor differences in the marks that might be apparent on a side- by-side comparison, but are not likely to be noted or remembered when the marks are Serial No. 86308883 - 4 - not compared in this manner. Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980). For example, Applicant has discussed the fact that Applicant’s mark begins with “THE” and is in the plural, and the Registrant’s mark has a flair design. However, none of these differences is sufficient to distinguish the marks. The word “THE” has frequently been found to have no source-indicating value. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (marks WAVE and THE WAVE virtually identical, the addition of the word THE does not have any trademark significance); In re Narwood Productions, Inc., 223 USPQ 1034 (TTAB 1984) (noting the insignificance of the word “the” in comparison of THE MUSIC MAKERS and MUSICMAKERS). Nor does the fact that, in Applicant’s mark, ARTSMITHS is the plural form of the word. See Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“There is no material difference, in a trademark sense, between the singular and plural forms of the word ‘Zombie’”). As the Board stated in Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014), “It is well established that trademarks and/or service marks consisting of the singular and plural forms of the same term are essentially the same mark” (finding likelihood of confusion between SHAPE in stylized form and SHAPES). The “flair” design, as well, is not a distinguishing element. Although the Registrant referred to it as a “flair” in its description of its mark (“The mark consists of the word Artsmith in brown, with a stylized flair beneath in turquoise”), the design is not a Serial No. 86308883 - 5 - pictorial element that would be articulated (e.g., ARTSMITH and monkey design), but is more in the nature of a design that merely emphasizes the word. Therefore, consumers are not likely to note or remember it. See In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987) (if a mark comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services). Applicant points out that the cited mark is in a special font, and that the colors brown and turquoise have been claimed as a feature of the mark. Although this is accurate, it is not a basis for distinguishing the marks. Applicant has applied for its mark in standard characters, and therefore it may depict its mark in any font and in any colors, including the font and colors used in the Registrant’s mark. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011). When the marks are compared in their entireties, and giving due weight to the dominant elements of the marks, Applicant’s mark is very similar to the cited mark in appearance, pronunciation, meaning and commercial impression. We are not persuaded by Applicant’s argument that the marks are different in meaning because its mark suggests a plurality of people who make art, while ARTSMITH would have an indeterminate meaning with respect to jewelry products. 4 TTABVUE 4-5. The Examining Attorney has submitted evidence that shows that jewelry is considered a type of art form. See webpage for Kachina House, stating that “At Kachina House we carry a vast selection of Native American handmade jewelry, including earrings, Serial No. 86308883 - 6 - rings, bracelets, coral jewelry and turquoise jewelry, bolo ties, belt buckles and many other Native American pieces of wearable art pieces”;3 the Artful Home website has a section called “art jewelry” and states that “each piece of handmade art jewelry showcases the skill of an artist….”;4 and the Artspan Contemporary Art website explains that “jewelry is art disguised as attire.”5 We have no doubt that jewelry pieces may be viewed as a form of art, and that Applicant’s mark and the Registrant’s mark convey very similar meanings. Accordingly, we find that this du Pont factor favors a finding of likelihood of confusion. We next consider the du Pont factors of the goods/services and channels of trade. The Registrant’s goods are identified as “jewelry”; Applicant’s goods are identified as “retail store services featuring handmade artisan products in the nature of original artwork in a wide variety of mediums; online retail store services featuring handmade artisan products in the nature of artwork in a wide variety of mediums.” “It is not necessary that the goods or services be identical or even competitive in nature in order to support a finding of likelihood of confusion, it being sufficient that the goods or services are related in some manner and/or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons under circumstances that would give rise, because of the marks 3 April 10, 2015 Office action, p. 39. 4 Id. at 43. 5 Id. at 71. Serial No. 86308883 - 7 - employed thereon, to the mistaken belief that they originate from or are in some way associated with the same producer.” In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990). Applicant’s online and retail store services feature handmade artisan products in the nature of artwork.6 The dictionary definitions of “art” include “something that is created with imagination and skill and that is beautiful or that expresses important ideas or feelings” and “works created by artists: paintings, sculptures, etc. that are created to be beautiful or to express important ideas or feelings.”7 The Examining Attorney has, as indicated above, presented evidence showing that jewelry can be considered a work of art. In addition to the evidence mentioned above, the website of Maui Hands lists, under the heading “View Artwork,” such categories as “Original Paintings,” “Prints,” “Photography,” “Jewelry” and “Sculpture.”8 Pages from the websites of The Museum of Fine Arts in Boston and The Walters Art Museum show “Jewelry” as a category in their collections,9 and the website of the College of Visual Arts & Design, University of North Texas in Denton Texas, states that a “Bachelor of Fine Arts degree in Studio Art with a concentration in metalsmithing and jewelry from the University of North Texas will help you become a practicing artist exhibiting 6 The retail store services specify that the artwork is “original”; this modification does not appear in the identification for the online retail store services. In any event, the distinction does not make a difference in our analysis. 7 www.merriam-webster.com, April 10, 2015 Office action, pp. 85-86. 8 September 23, 2014 Office Action, p. 20. 9 April 10, 2015 Office action, pp. 74 and 80. Serial No. 86308883 - 8 - and selling works in galleries, shops, museums and art fairs.”10 Moreover, the Examining Attorney has submitted evidence showing that jewelry can be a handmade artisan product. See, for example, website of Novica, welcoming visitors to “Novica’s Handmade Jewelry homepage,” described as “the largest online collection of artisan handcrafted jewelry.”11 The Artisan Design Gallery offers “Original Jewelry & Glass Art,” and advertises itself as “Making unique and hard-to-find artisan pieces available online.”12 This evidence is sufficient for us to find that Applicant’s identification is broad enough to include retail store services and online retail store services featuring handmade artisan jewelry; further, the Registrant’s identification of “jewelry,” without any restriction as to type, must be deemed to include handmade artisan jewelry.13 Thus, based on the identifications, we must presume that Applicant’s retail stores and online retail stores can sell handmade artisan jewelry of the type that Registrant sells. The cases are legion that the services of retail stores selling particular goods, and the goods themselves, are related for purposes of finding likelihood of confusion. See In re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (likelihood of confusion found between mark for, inter alia¸ general merchandise store services which include the sale of furniture, and mark for 10 Id. at 77. 11 September 23, 2014 Office action, p. 10. 12 Id. at 22-23. 13 For this reason, we reject Applicant’s argument that the jewelry the Registrant sells under the ARTSMITH mark is not a handmade artisan product. Serial No. 86308883 - 9 - furniture; “trademarks for goods find their principal use in connection with selling the goods” and the applicant’s services are selling services); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTABVUE 2015) (“it has often been recognized that likelihood of confusion may arise where confusingly similar marks are used on goods, on the one hand, and in connection with the sale of such goods, on the other”). Even if we were to treat “jewelry” as not falling under the category of “artwork,” the evidence submitted by the Examining Attorney shows that jewelry is closely related to online retail store services and retail store services featuring handmade artisan products in the nature of artwork. The Examining Attorney made of record with the April 10, 2015 Office action a number of third-party registrations showing that entities adopted a single mark for jewelry and, inter alia, retail store services and online retail store services featuring art (see, e.g., Registration Nos. 3629451, 3215215, 4089876, 4280354, 4291852, 4259331). Third-party registrations that individually cover a number of different items and that are based on use in commerce serve to suggest that the listed goods and/or services are of a type that may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). In addition, she submitted evidence of numerous websites showing third parties offering retail and online sale of artwork and jewelry. For example, the Novica website shows that it offers jewelry as well as paintings;14 the Lillstreet Art Center Gallery website shows it offers sculpture and jewelry;15 the Maui Hands 14 September 23, 2014 Office action, pp. 4-15. 15 Id. at 16-19. Serial No. 86308883 - 10 - website offers paintings and jewelry.16 We find that Applicant’s services are related to the Registrant’s goods, and that this du Pont factor favors a finding of likelihood of confusion. This same third-party website evidence shows that the goods and services can travel in the same channels of trade. Specifically, jewelry is sold in the same retail stores and online retail stores that sell handmade artisan artwork. This du Pont factor, too, favors a finding of likelihood of confusion. Applicant has made a number of unpersuasive arguments. With respect to its argument that “there is a question whether the mark ARTSMITH is still in use” by the Registrant, 4 TTABVUE 5, this is an impermissible collateral attack on the registration. If Applicant wished to make such a claim, the appropriate procedure would have been to file a petition to cancel the registration. Since Applicant did not do so, the registration is entitled to the presumptions provided by Section 7(b) of the Act, 15 U.S.C. § 1057. With respect to Applicant’s argument that Applicant would not be selling the Registrant’s goods in its store, the question is whether consumers, knowing of the Registrant’s jewelry sold under the mark ARTSMITH and design, would, upon encountering THE ARTSMITHS retail store or online retail store featuring artisan artwork, think there was a connection or association as to source of the goods and services. For example, would they be likely to believe that the company that makes the jewelry has now opened a retail store to sell various artisan artwork, 16 Id. at 20-21. Serial No. 86308883 - 11 - or is now selling such artwork online? Our answer to that question is an unequivocal “yes.” Applicant points to two third-party registrations, one for ARTSMITH MEDIA for “creation, design, development and maintenance of Web sites for third parties”17and one for HEARTSMITH for, inter alia,” computerized online retail store services featuring jewelry, namely, watches and accessories therefore” [sic]18 and two exhibits showing common law use of ARTSMITH and ART SMITH, to argue that Applicant’s mark and the Registrant’s mark can coexist. Third-party registrations can be used in the manner of dictionary definitions, to show that a term has a particular significance in an industry. In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). In this case, however, the registration for ARTSMITH MEDIA is for very different services from the services of Applicant and the goods of the Registrant. And the registration for HEARTSMITH is for a different mark from the marks at issue in this appeal. Although the term SMITH can certainly be said to have a meaning in connection with jewelry or a retail or online retail store featuring artisan products, that is not the only point of similarity between Applicant’s mark and the cited mark. The single third-party registration for HEARTSMITH does not show that ARTSMITH has a significance for jewelry, such that we must find that the Registrant’s registration for ARTSMITH and design is entitled to such a limited scope 17 Registration No. 4285510. 18 Registration No. 2615454. Serial No. 86308883 - 12 - of protection that it would not extend to prevent the registration of such a similar mark as THE ARTSMITHS. As for the common law usage, Art Smith (Exhibit D) obviously refers to an artist named Art Smith. It has the subtitle, “From the Village to Vogue: The Modernist Jewelry of Art Smith” and the text explains that these are “pieces including silver and gold jewelry created by African American artist, Art Smith.” Because “Art Smith” would be understood as a person’s name, the commercial impression of the mark is very different from that of ARTSMITH or THE ARTSMITHS. The remaining common law use, Artsmith, is, according to its website (Exhibit C), “a non-profit organization promoting arts education and the creation of new works of art.” We agree that this exhibit shows third-party use for services in the field of art, but this single third-party use is insufficient for us to find in favor of Applicant on the du Pont factor of “the number and nature of similar marks in use on similar goods.” Simply put, we cannot conclude on the basis of one third-party use that the public has been so exposed to ARTSMITH marks in connection with works of art that they would look to the other elements in Applicant’s mark, namely the word THE and the use of the plural form of ARTSMITH, to distinguish Applicant’s mark from the Registrant’s. Accordingly, we treat this factor as neutral. Neither Applicant nor the Examining Attorney have discussed any other du Pont factors, or submitted evidence in connection with them. To the extent that any may be relevant, we treat them as neutral. Serial No. 86308883 - 13 - After considering all of the evidence of record and the arguments made in connection therewith, we find that Applicant’s mark THE ARTSMITHS for its identified services is likely to cause confusion with the registered mark ARTSMITH and design for jewelry. Decision: The refusal to register Applicant’s mark THE ARTSMITHS is affirmed.