Valuty, Inc.

Trademark Trial and Appeal BoardMar 27, 2009

No. 78934912 (T.T.A.B. Mar. 27, 2009)

Hearing: Mailed: 2/11/2009 3/27/09 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Valuty, Inc. ________ Serial No. 78934912 _______ Terry L. Clark of Harness, Dickey & Pierce for Valuty, Inc. Peter Bromaghim, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney).1 _______ Before Quinn, Bucher and Taylor, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Valuty, Inc. filed, on July 21, 2006, an intent-to-use application to register the mark BIONIC AIR (“AIR” disclaimed) (standard character form) for “air purifier and ionizer” (in International Class 11). The trademark examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when applied 1 Ronald DelGizzi, an examining attorney new to the application file, appeared on behalf of the Office at the oral hearing. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser. No. 78934912 2 to applicant’s goods, so resembles the previously registered mark BIONICS (typed form) for the goods and services set forth below2 as to be likely to cause confusion. Skin care appliances, namely, masks that emit far infrared rays for cleansing and stimulating skin; skin care appliances, namely, ultrasound machines emitting low frequency waves to cleanse and stimulate skin; skin care appliances, namely, high frequency skin treatment machines for cleansing and treating the skin; skin care appliances, namely ozone generators for cleansing and stimulating skin; electro massage appliance (in International Class 10); Household air cleaners; ozone sanitizers for air and water; water purifiers using ozone; water treatment equipment, namely, water sterilizers; water purification units for domestic use; instant hot water heaters for domestic and commercial use; cooling/heating appliance, namely, air conditioner/heater (in International Class 11); and Retail store featuring electronic skin care appliances, cosmetics, water purifiers, water heaters, optical coherent tomography, ozone sanitizers, medical appliances for ultrasound, and air cleaners (in International Class 35). 2 Registration No. 2952190, issued May 17, 2005. Ser. No. 78934912 3 When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs, and both were present at an oral hearing. Applicant contends that the examining attorney has improperly dissected applicant’s mark by focusing on the first word, “BIONIC,” of its mark, rather than considering the mark BIONIC AIR in its entirety. According to applicant, the examining attorney also has improperly characterized the word “AIR” as generic or descriptive. Although applicant has disclaimed the term “AIR,” applicant goes on to argue that “AIR when used in combination with BIONIC to identify the goods of the present application would not be used in a generic or descriptive sense.” (Brief, p. 4). Applicant also argues that the marks have different meanings: “The word ‘BIONIC’ has a special meaning to consumers from its extensive use. The phrases ‘Bionic Man’ and ‘Bionic Woman’ are both very famous and well known phrases that were made popular by both past and current television programs. In comparison, the word ‘BIONICS’ is defined as a science concerned with application of data about the functioning of biological systems to the solution of engineering problems.” (Brief, p. 6). Applicant does not dispute the similarity between the goods; rather, it concedes that the goods are related Ser. No. 78934912 4 (Response, 6/19/07) and assumes “for the purpose of argument only” that the goods are identical. (Request for Reconsideration, p. 4). In support of its position, applicant submitted a printout of a TESS search summary listing third-party registrations and applications of marks comprising, in whole or in part, “BIONIC.” The examining attorney maintains that applicant’s “air purifier and ionizer” are legally identical to registrant’s “household air cleaners” and “ozone sanitizers for air.” As to the marks, the examining attorney contends that the marks are highly similar. The examining attorney is not persuaded that the TESS summary justifies a finding that the cited mark is entitled to a narrow scope of protection. In support of the refusal, the examining attorney relied on dictionary definitions of the terms “bionic” and “bionics,” and excerpts of third-party websites providing information about air purifiers and cleaners. 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 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, Ser. No. 78934912 5 however, 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 (CCPA 1976). As indicated above, applicant does not dispute the similarity between the goods. Applicant’s goods are identified as “air purifier and ionizer,” and registrant’s goods include “household air cleaners” and “ozone sanitizers for air.” As identified, these goods are legally identical for purposes of the likelihood of confusion analysis. Lest there be any doubt, the examining attorney’s Internet evidence shows that air purifiers, air cleaners and ionizers are similar products that perform the same function. Likelihood of confusion may be found based on any goods that come within the identification of goods in the involved application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Because the goods are identical in part, we presume that they move through the same trade channels (e.g., mass merchandisers) to the same classes of purchasers, including ordinary consumers. The identity in these du Pont factors weighs heavily in favor of a finding of likelihood of confusion. Ser. No. 78934912 6 With respect to the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Finally, where, as in the present case, the marks are used in connection with legally identical goods (at least in part), the degree of similarity between the marks that is necessary to support a finding of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). As to the marks, applicant’s mark BIONIC AIR and registrant’s mark BIONICS obviously share a “BIONIC” component, albeit with a letter “S” in registrant’s mark. Ser. No. 78934912 7 It is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”) For example, merely descriptive matter that is disclaimed is accorded subordinate status relative to the more distinctive portions of a mark. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). Applicant has disclaimed the generic term “AIR,” and this term, as used in connection with air purifiers and ionizers, plays a clearly subordinate role to the “BIONIC” component in applicant’s mark. Moreover, the term “BIONIC” is the first term of applicant’s mark; clearly, this first component of applicant’s mark is most likely to be impressed upon the mind of a purchaser and will be remembered and used when calling for the goods. See Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Ser. No. 78934912 8 In view of the above, the marks BIONIC AIR and BIONICS, when considered in their entireties, are similar in sound and appearance. Although applicant attempts to draw a distinction between the marks in terms of meaning, we are not persuaded. For many consumers, BIONIC may be perceived simply as a singular form of BIONICS. See Wilson v. Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident that there is no material difference, in a trademark sense, between the singular and plural forms of the word ‘Zombie’ and they will therefore be regarded here as the same mark.”). For others, the terms may be seen simply as different parts of speech but with a common meaning. In this connection, the term “bionics” is defined as “noun: Application of biological principles to the study and design of engineering systems, especially electronic systems,” and “bionic” means “Adjective: Of or relating to bionics.” The American Heritage of the English Language (4th ed. 2000). Contrary to applicant’s arguments, the marks convey the same connotation, namely that the air purifiers/cleaners employ bionics to clean the air. Given the similarities just discussed, the marks, when used in connection with legally identical air Ser. No. 78934912 9 purifiers/cleaners, will engender essentially identical overall commercial impressions. In sum, the marks are highly similar, and this factor weighs in favor of a finding of likelihood of confusion. The existence of third-party registrations and applications for BIONIC marks and variations thereof is of little relevance to our analysis. Applicant submitted, with its response on June 17, 2007, a printout of a search summary listing seventy-seven BIONIC marks retrieved from the TESS database. The examining attorney, in the final refusal dated July 24, 2007, considered the search summary. In its appeal brief, applicant referred to the search summary, and added that “[i]n addition to the seventy-seven (77) pending and registered marks...there were over three (3) times (over two hundred-twenty (220) registrations and applications) as many hits in a search of the U.S.P.T.O. database for items beyond active and pending items.” (Brief, p. 5). Although the TESS summary is insufficient to make the listed registrations and applications of record, the summary itself is of record in this appeal. In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001). However, the summary merely lists the mark, the registration or application number, and the “Live/Dead” status of the Ser. No. 78934912 10 registration or application, with no accompanying indication of the goods and/or services associated therewith. Thus, while we have considered the TESS summary, it is of virtually no probative value. Further, we have given no weight to applicant’s mere reference in its brief to any additional registrations and applications. We hasten to add that, even if applicant had submitted copies of the registrations and applications listed in the TESS summary, they are not proof that consumers are familiar with such marks so as to be accustomed to the existence of the same or similar marks in the marketplace. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). Further, to have any relevance, the marks must cover goods similar to the ones involved in the appeal. Moreover, even if we were to find, based on applicant’s evidence, that registrant’s mark is weak and entitled to a narrow scope of protection, the scope is still broad enough to prevent the registration of a similar mark for identical goods. See In re Farah Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277, 278 (CCPA 1971). Lastly, the third-party applications have no evidentiary value other than to show that they were filed. Ser. No. 78934912 11 In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1699 (TTAB 1992). We conclude that consumers familiar with registrant’s “household air cleaners” and “ozone sanitizers for air” sold under the mark BIONICS would be likely to believe, upon encountering applicant’s mark BIONIC AIR for “air purifier and ionizer,” that the goods originate from or are associated with or sponsored by the same entity. Decision: The refusal to register is affirmed.