TPK U.S.A., LLC

Trademark Trial and Appeal BoardJul 9, 2014

No. 85192690 (T.T.A.B. Jul. 9, 2014)

This Opinion is Not a Precedent of the TTAB Mailed: July 9, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re TPK U.S.A., LLC _____ Serial No. 85192690 _____ Gokalp Bayramoglu of Bayramoglu Law Offices, LLC, for TPK U.S.A., LLC Blake Lovelace, Trademark Examining Attorney, Law Office 119, J. Brett Golden, Managing Attorney. _____ Before Bucher, Cataldo and Greenbaum, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: TPK U.S.A., LLC (“Applicant”) seeks registration on the Principal Register of the mark (the words “Touch Monitor” disclaimed) for Amusement apparatus adapted for use with an external display screen or monitor; Amusement apparatus and games adapted for use with television receivers or with video or computer monitors; Amusement machines, namely, hand-held electronic game units adapted for use with an external display screen or monitor; Anti-glare filters for televisions and computer monitors; Computer monitor frames; Computer monitors; Computer screens; Computer software, namely, game engine software for Serial No. 85192690 - 2 - video game development and operation in International Class 9.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that Applicant’s mark so resembles the previously registered marks TRUETOUCH (in standard characters) for “Capacitive touch screen products and solutions, namely, computer and telephone touch screens, touch sensors for computer and telephone monitors and integrated circuits” in International Class 9,2 and, TRU (in standard characters) and for, among other things, “computer games software; software incorporating computer games; software incorporating computer games for mobile phones” in International Class 9,3 as to be likely to cause confusion, to cause mistake, or to deceive. After the Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. 1 Application Serial No. 85192690 was filed on December 7, 2010, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. Applicant’s mark includes the following description: The mark consists of black colored capital letters “TR”, a small letter “U” with a line on top in red color, with the combination forming the word “TRU”, three circles in red color connected to each other with arcs in black color appear to the left of the wording “TRU”, the wording “Touch Monitor” is written in gray color beneath the design and the word “TRU”. 2 Registration No. 3944837 for TRUETOUCH, owned by Cypress Semiconductor Corp., was registered on the Principal Register on April 12, 2011. 3 Registration Nos. 4181663 for TRU (standard characters) and 4188770 for TRU (stylized), both owned by Truphone Ltd., were registered on the Principal Register on July 31, 2012, and August 14, 2012, respectively. Serial No. 85 I. A Whe to the r 1357, 17 101 USP 1311, 65 key con between 544 F.2 these fa 2(d) goe goods a Inc., 50 We f mark m and App with Applica 4 To be various t Action. submitte registrat 192690 pplicable n the ques elevant fa 7 USPQ 5 Q2d 1905 USPQ2d sideration the goods d 1098, 19 ctors, we k s to the cu nd differen USPQ2d 1 ocus our ost simila licant’s m or TR nt’s mark clear, the hird-party As the Ex d to dem ions are rel Law tion is like ctors set o 63, 567 (C (Fed. Cir 1201 (Fed s are the or service 2 USPQ 24 eep in min mulative e ces in the 209 (TTAB analysis o r to Appli ark, there UETOUC and TRU refusal per registration amining A onstrate t ated. Ex. A lihood of c ut in In r CPA 1973 . 2012); an . Cir. 2003 similariti s. See Fed (CCPA 1 d that “[t] ffect of dif marks.” I 1999). n Registra cant’s mar is no need H, while i , then the tains only s that the ttorney ap hat the g tty. Br. at 6 - 3 - onfusion, e E. I. du ). See also d In re Ma ). In any li es betwee erated Foo 976). In co he fundam ferences in d. at 29; tion No. 4 k.4 If conf for us to f there is re would b to the thre Examining tly notes, oods ident . we analyz Pont de N In re Vit jestic Dis kelihood o n the mar ds, Inc. v. nsidering ental inqu the essen see also In 181663 fo usion is li consider th no likeliho e no like e cited reg Attorney a the third ified in t e the facts emours & erra Inc., 6 tilling Co., f confusion ks and th Fort How the eviden iry manda tial charac re Azteca r the mar kely betw e likeliho od of conf lihood of c istrations, ttached to -party reg he applica as they re Co., 476 71 F.3d 1 Inc., 315 analysis, e similar ard Paper ce of recor ted by Sec teristics o Rest. Ent k TRU as een that m od of confu usion betw onfusion and not to the Final O istrations tion and late F.2d 358, F.3d two ities Co., d on tion f the ers., the ark sion een with the ffice were cited Serial No. 85192690 - 4 - or TRUETOUCH. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). A. Relatedness of the Goods, Channels of Trade and Classes of Purchasers We begin with the du Pont factors of the relatedness of the goods, channels of trade and class of purchasers. We base our evaluation on the goods as they are identified in the application and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The Examining Attorney focuses his comparison of Applicant’s “Computer software, namely, game engine software for video game development and operation” with the “computer games software; software incorporating computer games; software incorporating computer games for mobile phones” identified in the registration. Registrant’s broad identification of “computer games software” encompasses all variations of such software, including Applicant’s “game engine software for video game development and operation.” Thus, the identifications of goods in the application and registration are, in part, legally identical, and Applicant does not argue otherwise. It is sufficient for a finding of likelihood of confusion if the relatedness is established for any item encompassed by the identification of goods within a particular class in the application. Tuxedo Serial No. 85 Monopo 1981). Furt and the either t Registra the sam USPQ2d likelihoo 1994) (“ the sam The that we B We t Applica their en Palm B F.3d 13 567. “Th ‘whethe such tha 192690 ly, Inc. v. her, becau re are no he applica nt’s goods e classes o at 1908 d of confu Because th e channels similarity igh in favo . The Si urn then t nt’s mark tireties as ay Imports 69, 73 US e proper r the mark t persons General M se the goo limitation tion or cit will be so f purchas (the Boar sion); In r e goods a of trade, a between t r of a findi milarities o the du P a to appear Inc. v. V PQ2d 1689 test is no s are suffi who encou ills Fun G ds include s as to ch ed registra ld in the s ers. See St d may rel e Smith a re legally i nd be sold he goods, ng of likeli and Dissim ont factor o nd Registr ance, soun euve Clicq , 1691 (Fe t a side-by ciently sim nter the m - 5 - roup, 648 legally id annels of tion, we m ame chan one Lion, y on this nd Mehaff dentical, t to the sam channels o hood of co ilarities B f the simi ant’s mar d, connot uot Ponsa d. Cir. 20 -side com ilar in ter arks wou F.2d 1335 entical co trade or ust presu nels of tra 110 USPQ legal pres ey, 31 US hey must e class of f trade an nfusion. etween th larities an k TRU. W ation and rdin Mais 05) quotin parison of ms of thei ld be likel , 209 USP mputer ga classes of me that A de and wil 2d at 116 umption i PQ2d 153 be presum purchaser d purchas e Marks d dissimila e analyze commercia on Fondee g du Pont the mark r commerc y to assum Q 986 (C mes softw purchaser pplicant's l be bough 1; Viterra, n determi 1, 1532 (T ed to trav s.”). ers are fac rities betw “the mark l impress En 1772, , 177 USP s, but ins ial impres e a connec CPA are, s in and t by 101 ning TAB el in tors een s in ion.” 396 Q at tead sion’ tion Serial No. 85 between 101 US where, necessa recogniz Life of A Appl addition distingu TRU, w it the st Whil a mark weight t by the m Cir. 198 TRU, w has been Corp, v. (CALIF conditio cold per 192690 the parti PQ2d 171 as here, th ry to find able dispa merica, 97 icant argu al wordin ish them. hich he con rongest so e we view may be m o this dom ark. See 5). Here, hich is ide found wh California ORNIA C ner and sh manent w es.” Coach 3, 1721 (F e goods in likelihood rity betwe 0 F.2d 874 es that th g and de The Exam tends is t urce identi the marks ore signifi inant feat In re Nat the domin ntical to R ere an ent Concept ONCEPT ampoo is ave lotion Servs., In ed. Cir. clude leg of confusi en the goo , 23 USPQ e differen sign elem ining Att he most di fying elem in their e cant than ure in det ional Data ant porti egistrant ire mark i Corp., 558 and surf likely to c and neutr - 6 - c. v. Trium 2012) (cita ally identi on need n ds. Centu 2d 1698 ( ces in the ent in A orney focu stinctive p ent. ntireties, i another, a ermining Corp., 75 on of App ’s entire m s incorpor F.2d 1019 er design ause confu alizer); In ph Learn tion omit cal items, ot be as g ry 21 Rea Fed. Cir. 1 marks in pplicant’s ses on th ortion of A t is well-s nd it is no the comme 3 F.2d 10 licant’s m ark. Like ated withi , 194 USP for men sion with re West P ing LLC, 6 ted). We the degre reat as wh l Estate Co 992). appearan mark are e shared l pplicant’s ettled that t imprope rcial impr 56, 224 U ark lihood of c n another. Q 419, 42 ’s cologne the mark oint-Pepp 68 F.3d 1 also note e of simila ere there rp. v. Cen ce due to sufficien iteral elem mark, ma one featu r to give m ession cre SPQ 749 ( is the w onfusion o See The W 2 (CCPA 1 , hair sp CONCEPT erell, Inc., 356, that rity is a tury the t to ent king re of ore ated Fed. ord ften ella 977) ray, for 468 Serial No. 85192690 - 7 - F.2d 200, 175 USPQ 558 (CCPA 1972) (WEST POINT PEPPERELL and griffin design for fabrics is likely to cause confusion with WEST POINT for woolen piece goods); S. Gumpert Co., Inc. v. ITT Continental Baking Company, 191 USPQ 409 (TTAB 1976) (FLAV-O-BAKE for seasoned coating mix is likely to cause confusion with FLAVO for cake icing flavoring products). The addition of the descriptive words TOUCH MONITOR, which have been disclaimed, is not sufficient to distinguish the marks. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, National Data, 224 USPQ at 752 (“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.”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression.”). Furthermore, the wording TOUCH MONITOR is presented in very small size relative to the word TRU in Applicant’s mark. As a result, from a visual standpoint, the wording TOUCH MONITOR is far less prominent than the word TRU. In addition, the stylization and design in Applicant’s mark is minimal and does not overcome the dominance of the literal element TRU shared by both Applicant’s and Registrant’s marks. In the case of marks consisting of words and a design, the words normally are given greater weight because they would be used by consumers to request the products. In re Dakin's Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, Serial No. 85 1554 (T characte stylizati Bank G In vi mark ar sound, related favors a C We h relevant and arg goods i purchas Applica Dec 192690 TAB 1987 rs, it is on, includ roup Inc., 6 ew of the e compare connotatio goods, con finding of . Conclu ave caref du Pont f uments no nclude leg ers are th nt’s mark ision: The ). Moreov not limite ing that si 37 F.3d 1 foregoing, d in their n and com fusion wou likelihood sion ully consid actors, as t specifica ally ident e same, a 2(d) refus er, becaus d to any milar to Ap 344, 98 US we find t entireties mercial i ld be like of confusi ered all o well as Ap lly discuss ical produ nd the ma and Regis al to regist - 8 - e the cite particular plicant’s m PQ2d 125 hat when , they are mpression ly to occur on. f the evide plicant’s a ed in this cts, the rks are si trant’s ma er Applica d mark is display a ark. Citig 3, 1258-59 Applicant' sufficientl that, if u . As such nce of rec rguments opinion). W channels milar, con rk TRU. nt’s mark registere nd can be roup Inc. (Fed. Cir. s mark an y similar sed in co , this du P ord as it p (includin e find th of trade a fusion is is affirmed d in stan used in v. Capital 2011). d Registra in appeara nnection ont factor ertains to g any evid at because nd classe likely betw . dard any City nt's nce, with also the ence the s of een