The Other Side Academy

Trademark Trial and Appeal BoardSep 18, 2020

88138988 (T.T.A.B. Sep. 18, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: September 18, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re The Other Side Academy _____ Serial Nos. 88138988 and 88138996 _____ Jared S. Goff of Goff IP Law for The Other Side Academy. Steven W. Ferrell Jr., Trademark Examining Attorney, Law Office 121, Richard White, Managing Attorney. _____ Before Cataldo, Bergsman and Lynch, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, The Other Side Academy, seeks registration on the Principal Register of the marks THE OTHER SIDE THRIFT BOUTIQUE in standard characters and , both identifying the following services: “retail thrift stores featuring a wide variety of consumer goods of others,” in International Class 35.1 1 Application Serial Nos. 88138988 and 88138996 both were filed on October 1, 2018, based upon Applicant’s allegation of August 6, 2017 as a date of first use of the mark anywhere and in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Applicant Serial Nos. 88138988 and 88138996 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks, when used in connection with the identified services, so resemble the mark OTHERSIDE, registered on the Principal Register in standard characters, identifying “retail store and on-line retail store services featuring a wide variety of consumer goods and services,” in International Class 35,2 as to be likely to cause confusion, mistake or deception. When the refusals were made final, Applicant appealed. The Examining Attorney and Applicant filed briefs. I. Proceedings Consolidated The ex parte appeals before the Board in these co-pending applications involve common issues of law and fact, and are presented on nearly identical records and briefs. The Board, upon our own initiative, may order the consolidation of the appeals for purposes of briefing, oral hearing, or final decision. See e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte consolidated two appeals); In re Country Music Association, Inc., 100 USPQ2d 1824, 1827 (TTAB 2011) (same); In re submitted a disclaimer of “THRIFT BOUTIQUE” apart from the mark as shown in both applications. Application Serial No. 88138966 includes the following description of the mark and color statement: The mark consists of a circular area having outer and inner circles forming a ring between them, with the circular area including a deck of a bridge sweeping from left to right through a bridge tower, with the circular area including waves resembling water flowing beneath the deck, and with the circular area including the stylized words “THE OTHER SIDE THRIFT BOUTIQUE” in the ring between the outer circle and the inner circle with “THE OTHER SIDE” written on the upper portion of the circle and “THRIFT BOUTIQUE” written on the lower portion with three dots between the words “THRIFT” and “THE” and one dot to the right of the word “SIDE”. Color is not claimed as a feature of the mark. 2 Registration No. 4971618 issued on June 7, 2016. Serial Nos. 88138988 and 88138996 - 3 - Bacardi & Co. Ltd., 48 USPQ2d 1031, 1033 (TTAB 1997) (Board sua sponte considered appeals in five applications together and rendered single opinion). See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1214 (June 2020). Because the refusal in these appeals involve common questions of fact and law, we hereby consolidate these appeals for purposes of final decision. References to the record and briefs refer to Application Serial No. 88138988 unless otherwise indicated.3 II. Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out 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., 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 relatedness of the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). A. Relatedness of the Services and Channels of Trade With regard to the services, channels of trade and classes of consumers, we must make our determinations under these factors based on the services as they are 3 All citations to documents contained in the TSDR database are to the downloadable .pdf versions of the documents in the USPTO TSDR Case Viewer. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB 2018). References to the briefs on appeal refer to the Board’s TTABVUE docket system. Before the TTABVUE designation is the docket entry number; and after this designation are the page references, if applicable. Serial Nos. 88138988 and 88138996 - 4 - identified in the applications and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may perceive [the respective goods or services of the parties] as related enough to cause confusion about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard, 62 USPQ2d at 1004). In this case, the broadly identified services in the cited registration, namely, “retail store and on-line retail store services featuring a wide variety of consumer goods and services,” must be presumed to include Applicant’s more specifically identified “retail thrift stores featuring a wide variety of consumer goods of others.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-14 (TTAB 2018). In other words, Applicant’s retail thrift stores are subsumed under the more generally identified retail stores identified in the cited registration, particularly inasmuch as both feature a wide variety of consumer goods. We note Applicant’s assertion that the services under the cited mark “reference a water sports company in the Florida Keys”4 and that its thrift store services are 4 Applicant’s brief: 7 TTABVUE 5. Serial Nos. 88138988 and 88138996 - 5 - unrelated to retail water sports services. Applicant argues that “the marks are used in different niche markets, decreasing the likelihood of any consumer confusion.”5 Applicant’s arguments are unpersuasive. As noted above, we determine the relatedness of the services, as we must, based upon their respective identifications in the cited registration and involved applications. See, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161. Neither Applicant nor Registrant recite the restrictions suggested by Applicant in their retail store and retail thrift store services and, as discussed above, they are presumed to be legally identical. Applicant may not seek to restrict the scope of the services covered in the pleaded registration or, for that matter, its own application by argument or extrinsic evidence. See, e.g., In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). Applicant argues that its trade channels encompass thrift stores while the trade channels for the services identified in the cited registration encompass a “board sports store in Florida and on its corresponding…website.”6 Applicant’s arguments similarly are unavailing. Because the services identified in the applications and the cited registration are legally identical, we must presume that the channels of trade and classes of purchasers for these services are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to 5 7 TTABVUE 7. 6 7 TTABVUE 6. Serial Nos. 88138988 and 88138996 - 6 - trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). See also Octocom Sys., Inc., 16 USPQ2d at 1787 (“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.”). We find that the du Pont factors of the legal identity of the services, channels of trade and consumers weigh heavily in favor of likelihood of confusion. B. Similarity/Dissimilarity of the Marks We consider Applicant’s marks THE OTHER SIDE THRIFT BOUTIQUE and with the registered mark OTHERSIDE, and compare them “in their entireties as to appearance, sound, connotation and commercial impression.” Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1160; Palm Bay Imps. 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 proper test is not a side-by-side comparison of the marks, but instead whether the marks are Serial Nos. 88138988 and 88138996 - 7 - 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) (internal quotation marks omitted). See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Consumers may not necessarily encounter the marks in close proximity and must rely upon their recollections thereof over time. In re Mucky Duck Mustard, 6 USPQ2d 1467, 1468 (TTAB 1988). In this regard, the proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the services at issue are retail thrift stores and retail store and on-line retail store services, the average customer is an ordinary consumer. Applicant’s mark in Application Serial No. 88138988, THE OTHER SIDE THRIFT BOUTIQUE in standard characters, consists of the entirety of the registered mark OTHERSIDE, also in standard characters, and merely adds the definite article “THE” and the descriptive or generic, disclaimed terms “THRIFT BOUTIQUE.” It is settled that “THE” possesses little, if any, source identifying capability. See, e.g., U. S. Nat’l Bank of Oregon v. Midwest Savings and Loan Association, 194 USPQ 232, 236 (TTAB Serial Nos. 88138988 and 88138996 - 8 - 1977) (“The definite article ‘THE’ likewise adds little distinguishing matter because the definite article most generally serves as a means to refer to a particular business entity or activity or division thereof, and it would be a natural tendency of customers in referring to opposer’s services under the mark in question to utilize the article ‘THE’ in front of ‘U-BANK’ in view of their uncertain memory or recollection of the many marks that they encounter in their everyday excursion into the marketplace”). Similarly, the presence or absence of a space between the same words, OTHER SIDE versus OTHERSIDE, is not a significant difference. Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar. The word marks are phonetically identical and visually almost identical”); In re Best Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); In re Narwood Prods., Inc., 223 USPQ 1034, 1034 (TTAB 1984) (“There is no doubt that the word portion of appellant’s mark and the mark subject of the cited registration are virtually identical since both consist primarily of the term ‘music makers.’ The fact that the presentation in the mark of the cited registration is as a single word rather than two words is obviously insignificant in determining the likelihood of confusion. So also is the fact that appellant’s mark, as it is sought to be registered, includes the definite article ‘the’”). Finally, Applicant’s addition of the highly descriptive or generic and disclaimed terms “THRIFT BOUTIQUE” to the registered mark does not create a significant Serial Nos. 88138988 and 88138996 - 9 - difference. Such disclaimed matter is often “less significant in creating the mark’s commercial impression.” In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). “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.’” Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985). However, while a disclaimed term … may be given little weight … it may not be ignored.” M2 Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006). In this case, the Examining Attorney submitted the following definitions with his first Office Action: thrift shop – a shop that sells secondhand articles and especially clothes and is often run for charitable purposes; and boutique – a small shop dealing in fashionable clothing or accessories.7 Thus, the wording “THRIFT BOUTIQUE” in Applicant’s marks merely describes a small shop selling fashionable secondhand clothing and articles. Thus, we find that consumers would not rely on this wording in Applicant’s mark to distinguish source. While there is no rule that likelihood of confusion automatically applies where one mark encompasses another, in this case, as in many others, the fact that the entire cited mark is incorporated in Applicant’s marks increases the similarity between them. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In 7 At 8-9. Definitions retrieved from merriam-webster.com. Serial Nos. 88138988 and 88138996 - 10 - re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding applicant’s CAREER IMAGE marks similar to registered mark CREST CAREER IMAGES). Thus, the marks are similar in appearance and sound to the extent that Applicant’s THE OTHER SIDE THRIFT BOUTIQUE mark fully encompasses the registered OTHERSIDE mark. Applicant’s mark connotes a retail thrift boutique store located literally or figuratively on the “other side.” The cited, registered mark connotes a retail store located literally or figuratively on the “other side.” As a result, THE OTHER SIDE THRIFT BOUTIQUE and OTHERSIDE are similar in connotation or meaning to the extent that both suggest a retail store located on the other side. We acknowledge that the presence of additional wording in Applicant’s marks partially differentiates it visually and aurally from the registered mark. This point of distinction, however, does not significantly diminish the strong similarities in connotation and overall commercial impression engendered by the marks. With regard to the mark in application Serial No. 88138996 and the registered mark OTHERSIDE, we find they also are more similar than dissimilar “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports, 73 USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). As to the wording, we incorporate our prior discussion of the wording in Applicant’s standard-character mark, which is the same as the wording in this mark. As Serial Nos. 88138988 and 88138996 - 11 - discussed above, the wording in Applicant’s marks is similar to the cited mark in appearance, sound and meaning. Further, it is settled that where, as here, a mark is comprised of both words and a design, the words are normally accorded greater weight, in part because consumers are likely to remember and use the words to request the goods. Viterra, 101 USPQ2d at 1911 (“the verbal portion of a word and design mark likely will be the dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks 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” and “because applicant’s mark shares with registrant’s mark that element responsible for creating its overall commercial impression, the marks are confusingly similar”). We find this general principle is applicable here. The design in Applicant’s mark, consisting of a deck of a bridge sweeping from left to right through a bridge tower, including waves resembling water flowing beneath the deck within a circular carrier, while prominent in size, appears to reinforce and draw additional attention to the wording “THE OTHER SIDE” by visually suggesting the “other side” on which Applicant’s services may be found. Thus, we do not discount the design element of Applicant’s mark, but rather accord it less significance than the wording. It does not change the meaning or commercial impression of the wording in a way that distinguishes it from cited mark. Serial Nos. 88138988 and 88138996 - 12 - Based upon the above analysis, we find that THE OTHER SIDE THRIFT BOUTIQUE and are more similar than dissimilar to the registered mark OTHERSIDE in terms of appearance, sound, connotation and commercial impression. As a result, consumers encountering the applied-for marks could mistakenly believe that they represent a variation on the registered mark used to identify thrift store services emanating from a common source. This is particularly the case because, “[w]hen marks would appear on virtually identical ... services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). See also ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980). In view thereof, the du Pont factor of the similarity of the marks favors a finding of likelihood of confusion. C. Actual Confusion Finally, Applicant argues that the marks at issue have been in concurrent use since August 2017 and “two years of concurrent use without any actual confusion indicates that consumers are not likely to be confused in the future.”8 We do not accord significant weight to Applicant’s contention, unsupported by any evidence, that there have been no instances of actual confusion despite contemporaneous use 8 7 TTABVUE 5. Serial Nos. 88138988 and 88138996 - 13 - of the respective marks. Contrary to Applicant’s contentions, the Federal Circuit has addressed the question of the weight to be given to an assertion of no actual confusion by an applicant in an ex parte proceeding: With regard to the seventh DuPont factor, we agree with the Board that Majestic’s uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of appellant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, [citation omitted], especially in an ex parte context. Majestic Distilling, 65 USPQ2d at 1205. Accordingly, while examples of actual confusion may point toward a finding of a likelihood of confusion, an absence of such evidence is not compelling in support of a finding of no likelihood of confusion, particularly in these circumstances where there has only been alleged contemporaneous use of the marks for three years. “The eighth du Pont factor … “[t]he length of time during and conditions under which there has been concurrent use without evidence of actual confusion,” see du Pont, 177 USPQ at 567 — requires us to look at actual market conditions, to the extent there is evidence of such conditions of record.”. In re Guild Mtg. Co., 2020 USPQ2d 10279 *6 (TTAB 2020). See also In re Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971). Applicant has not submitted evidence regarding overlapping areas of use or actual marketplace exposure. See Guild Mortg. Co., 2020 USPQ2d at Serial Nos. 88138988 and 88138996 - 14 - *7. In short, we have no evidence regarding lack of actual confusion, and no contextual evidence “such that we could make a finding as to the ‘length of time during and conditions under which there has been concurrent use without evidence of actual confusion.’” Id. at *25. These du Pont factors are neutral. D. Likelihood of Confusion Summary Considering all the evidence of record, including any evidence not specifically discussed herein, we find that the marks in their entireties are more similar than dissimilar and that the identified services are legally identical and will be encountered in common channels of trade by the same classes of consumers. We find therefore that Applicant’s marks are likely to cause confusion with the mark in the cited registration when used in association with the identified services. III. Conclusion Decision: The refusals to register based on likelihood of confusion under Section 2(d) of the Trademark Act are affirmed in both cases.