Tri-Cool, Inc.

Trademark Trial and Appeal BoardApr 3, 2014

No. 85977426 (T.T.A.B. Apr. 3, 2014)

Kenneth Atki Mark V Mic Before B Adm Opinion Tri-C followin for good UNIT C. Booth ns of Paten . Sparacino hael Hami ucher, We inistrativ by Bucher ool, Inc. g mark: s identifie ED STAT Trad and Bryce t Law Gro , Tradema lton, Mana llington a e Tradema , Adminis (“applicant d, as amen This O Precede ES PATEN emark Tr In re T Serial W. Burnh up Atkins rk Examin ging Attor nd Gorowi rk Judges trative Tra ”) seeks r ded, as fol pinion is N nt of the T T AND T _____ ial and Ap _____ ri-Cool, I _____ No. 859774 _____ am of Boo & Associa ing Attor ney. _____ tz, . demark J egistration lows: ot a TAB RADEMAR peal Board nc. 26 th Udall F tes, P.C., f ney, Law O udge: on the P Mailed K OFFIC uller PLC, or Tri-Coo ffice 103, rincipal R : April 3, 2 E and Rober l, Inc. egister of 014 t D. the Serial No. 85 The ground § 1052(d for good 1 Applic applican 1(b) of t goods in included The invo Serial N represen 2 Registr accepted “L” and facing ba 977426 clothi short caps examining of likeliho ) in view o s listed as clothi work zippe wome Inter ation Seria t’s allegatio he Tradem Internatio in “parent lved goods o. 8597742 ted by a sty ation No. and Sectio the words ckwards w ng, namel s, sweatpa in Internat attorney od of con f the follow follows: ng, name shirts, ta red hood n’s tops national C l No. 85370 n of a bona ark Act. A nal Classe ” Applicatio in Interna 6. The mar lized handg 3345027 is n 15 affida “Fully Loa ith a five-po y, T-shirts nts, sweat ional Clas has refu fusion un ing previ ly shirts, nk tops, s ed sweats , hats, lass 25.2 893 was fil fide inten fter severa s 13 and n Serial N tional Cla k consists o un and the sued on N vit acknow ded.” The o inted star i - 2 - , tank top shirts, ves s 25.1 sed registr der Trade ously regis T-shirts, weatshirts hirts, th beanies a ed July 13, tion to use l amendme 18 and th o. 8537089 ss 25 were f the words letter “L” i ovember 27 ledged. The verall desi n the cente s, jackets, ts, belts, a ation of a mark Act tered mar long slee , hooded ongs, G-s nd skul 2011, in m the mark i nts and a e services 3 issued as then move “Fully Loa s represent , 2007; Se mark con gn consists r of the two polo shirt nd baseba pplicant’s Section 2 k: ve T-shirt sweatshirt trings an l caps ultiple clas n commerc divisional in Interna Registratio d into “ch ded” where ed by a styl ction 8 aff sists of the of a styliz letters. s, ll mark on (d), 15 U s, s, d in ses, based e under Se application tional Clas n No. 4369 ild” Applic the letter “ ized gun cl idavit (six-y letters “F” ed “F” and the .S.C. upon ction , the s 41 115. ation F” is ip. ear) and “L” Serial No. 85977426 - 3 - When the refusal was made final, applicant appealed and requested reconsideration. After the examining attorney denied the request for reconsideration, the appeal was resumed. The sole remaining issue has been fully briefed by applicant and the examining attorney. We affirm the refusal to register. Likelihood of confusion Our determination of the examining attorney’s refusal to register the mark under Section 2(d) of the Trademark Act is based upon an analysis of all of the facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 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. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). With respect to the goods and their respective trade channels, applicant continues to argue a clear difference in the goods: … The separate and distinct nature of the trade channels associated with Registrant’s and Appellant’s goods is evidence that the differences in conditions surrounding the marketing of Appellant’s and Registrant’s goods will not create a likelihood of confusion for consumers with respect to Appellant’s goods listed in the description of goods for IC 25. Appellant’s clothing sales are in association with sales of firearms, firearm accessories, and education services, namely, providing training in the use and operation of firearms, self-defense, firearms safety, and firearms skills. See, e.g., Appellant’s descriptions for ICs 9, 13, 18, and 41 in parent Serial No. 85977426 - 4 - Application No. 85/370,893. Thus, the trade channels associated with Appellant’s sale of clothing are in association with educational courses and through online purchases. See, e.g., http://www.fullyloaded.biz/; last visited 11/28/12. Appellant notes that the conditions surrounding the marketing and sale of Registrant’s clothing is within the context of skateboards and skate equipment. … Thus, the trade channels associated with Registrant’s sale of clothing can be expected to occur at specialty stores such as skate shops and through online purchases. See, e.g., http://fullyloaded.us/; last visited 11/28/12. Therefore, [there is no likelihood of confusion] … because the differences in trade channels and the conditions surrounding the marketing and sale of Appellant’s and Registrant’s goods would not be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source. However, this du Pont factor must be based upon the identifications of the respective goods as listed in the application and registration at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); and Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Unrestricted and broad identifications are presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); and In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Based on this guidance, and given the absence of any limitations as to channels of trade in the respective identifications of goods, the examining attorney argues that we must assume that applicant’s “T-shirts, tank tops, polo shirts, sweatshirts, and baseball caps” are legally identical to registrant’s “T-shirts, tank tops, shirts, sweatshirts and hats.” Serial No. 85977426 - 5 - We agree that these are legally identical goods, and moreover, we must presume that the respective trade channels are the same, and that applicant and registrant are marketing overlapping types of clothing to the same classes of ordinary purchasers. In addition to the legally-identical goods, the examining attorney also points to copies of use-based, third-party registrations suggesting that the balance of applicant’s and registrant’s respective goods are of a type which may emanate from a single source. In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Finally, although there are no per se rules that all clothing items are related, the examining attorney points to a variety of precedential decisions where we have found many different types of apparel to be related goods in the context of past Section 2(d) likelihood of confusion analyses. Accordingly, we conclude without further discussion that du Pont factors two, three and four all favor a finding of likelihood of confusion. As we turn to the du Pont factor focusing on the similarity of the marks, we note that when the goods of an applicant and registrant are legally identical, as is the case here, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (citing Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 Serial No. 85977426 - 6 - USPQ2d 1698, 1701 (Fed. Cir. 1992)); and In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010). As to the similarity of the marks, we consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are mindful that “[t]he 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 impressions such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977) (applicant’s MICROCERAM likely to cause confusion with opposer’s MONOCERAM, both for electrical capacitors); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992) (applicant’s SILVER SPOON CAFE and SILVER SPOON BAR & GRILL likely to cause confusion with opposer’s SPOONS and ). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980) (applicant’s for vehicle tires Serial No. 85 likely carriers In co to appea and “L” “F” is r stylized As to we find portions that wh portion calling accorded re Dakin v. Morr Kysela dispropo accentu noted b dissimil 977426 to cause for v and cover mparing t rance. Th along wit epresented gun clip. the admi that they of the inv en a mar is more lik for the go greater w ’s Miniatu ow, 708 F Pere et rtionately ated in bo y applica arities cre confusion ehicles eq s, etc.). hese two s e mark in h a five-po by a sty ttedly-diff fail to mit olved mar k consists ely to be im ods and/o eight in d res, Inc., . 2d 1579 Fils, Ltd -large lett th marks nt in its ated by th with o uipped wi pecial form the cited r inted star lized hand erent desi igate the ks. Applic of a liter pressed u r services eterminin 59 USPQ2 , 1581-82, ., 98 US ers “F” a . While ac brief, w ese respe - 7 - pposer’s th pneuma marks, t egistration . By contr gun and gn feature identical c ant is rem al portion pon a pur ; therefor g whether d 1593, 15 218 USPQ PQ2d 12 nd “L” de knowledgi e find th ctive desig tic tires, here are o contains ast, in app the letter s in these onnotation inded of th and a de chaser’s m e, the lite marks ar 96 (TTAB 198, 200 61, 1267- picted in ng the se at applica n feature , componen bvious dis large styli licant’s m “L” is rep two specia of the re e often-re sign porti emory, an ral portio e confusin 1999). See (Fed. Ci 68 (TTAB each of t veral visu nt overem s. It is m ts such as similaritie zed letters ark, the le resented l form ma spective lit cited prin on, the lit d to be use n is norm gly simila also CBS r. 1983); I 2011). he marks al distinct phasizes ore likely and tire s as “F” tter by a rks, eral ciple eral d in ally r. In Inc. n re The are ions the that Serial No. 85977426 - 8 - prospective consumers will overlook these distinctions and instead confuse the marks as identifying goods from the same source, given that the literal element in applicant’s mark is identical to the sole literal element of registrant’s mark. The connotation and commercial impression one draws from the term “Fully Loaded” will differ depending upon the goods with which the mark is associated and other elements within a composite drawing. For example, the term “Fully Loaded” will have quite different connotations as applied to a baked potato served in a restaurant, a tricked-out car or skateboard, a diaper or a lethal weapon. Here, the term “Fully Loaded” is applied to clothing items. Inasmuch as applicant’s composite mark has the unmistakable imagery of a gun and gun clip, the likelihood is great that customers exposed to applicant’s “Fully Loaded” mark will derive commercial impressions associated with firearms. The meaning of the design element in the cited mark is not as clear. Of course, since both these involved marks are applied to items of clothing, to the extent that the literal term “Fully Loaded” might be seen as suggestive of firearms, it could well have the same connotation in the context of both applicant’s and registrant’s goods. Accordingly, given the identical nature of the identified goods, usage of the identical term “Fully Loaded” by applicant and by registrant will engender quite similar connotations and overall commercial impressions. Hence, this critical du Pont factor also favors a finding of likely confusion. Finally, we turn next to the sixth du Pont factor focusing on the number and nature of similar marks adopted to be used on related goods. In this regard, Serial No. 85977426 - 9 - applicant refers in its brief to a number of websites where the term “Fully Loaded” is allegedly used in connection with items of clothing. However, screen-prints were never made of record, and furthermore, even these several URLs were not submitted prior to the time of filing applicant’s appeal brief. Hence, based upon the evidence of record, we have to assume that the term “Fully Loaded” is distinctive as applied to these items of clothing, and that the cited mark should be accorded the scope of protection normally provided such marks under the presumptions of Section 7 of the Trademark Act. In conclusion, we find that given the overlap in the items of clothing that will be marketed through the same presumed channels of trade to identical classes of ordinary purchasers (who will not be exercising a heightened level of care), and inasmuch as both applicant’s and registrant’s goods will be called for by the same literal element, the words “Fully Loaded,” we find herein a likelihood of confusion. Decision: The refusal to register applicant’s mark under Section 2(d) of the Lanham Act based upon Registration No. 3345027 is hereby affirmed.