We Make Things GmbH

Trademark Trial and Appeal BoardOct 31, 2012

No. 79068594 (T.T.A.B. Oct. 31, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: October 31, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re We Make Things GmbH ________ Serial No. 79068594 _______ We Make Things GmbH, pro se. Myriah A. Habeeb, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Seeherman, Cataldo and Lykos, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, We Make Things GmbH, filed an application to register on the Principal Register the mark shown below for Clothing, namely, belts, coats, jackets, overalls, pants, socks, pullovers, shifts, skirts, undergarments, stockings, suits, sweat absorbent underclothes, sweaters, tights, trousers, vests; waterproof clothing, namely, water proof jackets, water proof coats and waterproof pants, gloves; headgear for wear, namely, hats, caps; footwear; jerseys being clothing; hoods being clothing; combinations being clothing; parkas, pelerines; sandals; collar protectors; fittings of metal for shoes and boots, namely, protective metal members for Ser. No. 79068594 2 shoes and boots; soles for footwear; tips for footwear; boots; headbands being clothing; boots for sports; beach shoes; stockings; knitwear being clothing, namely, knit shirts, knit jackets; singlets; underwear; all aforementioned products destined for bikers in International Class 25.1 Applicant provided the following translation of the wording in its mark: “The English translation of ‘ÉCLAT’ in the mark is ‘sparkle.’” The trademark examining attorney refused registration under Section 2(d) of the Trademark Act on the ground that applicant’s mark, as used in connection with applicant’s goods, so resembles the mark displayed below, previously registered on the Principal Register, for Clothing, namely suits, jackets, sweaters, shirts, blouses, skirts, pants, singlets, raincoats, overcoats, overalls, T-shirts, jeans, 1 Application Serial No. 79068594 was filed December 16, 2008, seeking an extension of protection of applicant’s International Registration No. 1002182, issued on December 16, 2008. “The mark consists of a stylized arrowhead comprised of two stylized opposing letters “E” above the stylized term “éclat.” “Color is not claimed as a feature of the mark.” The application recites additional goods in International Classes 6 and 12 that are not subject to the instant refusal to register. Ser. No. 79068594 3 swimsuits, robes, underwear, belts, gloves, socks, ties, and wraps in International Class 25,2 as to be likely to cause confusion. Registrant provided the following translation of the wording in its mark: “The term ‘ECLAT’ is French for ‘sparkle.’” When the refusal was made final, applicant appealed.3 2 Registration No. 2657498 issued December 10, 2002. Section 8 affidavit accepted; Section 15 affidavit acknowledged. Renewed. “Color is not claimed as a feature of the mark.” 3 The examining attorney also issued a final requirement addressing certain indefinite language in applicant’s identification of Class 12 goods. These goods subsequently were deleted by examiner’s amendment, along with the goods in International Class 25, as a consequence of applicant’s unintentional abandonment of the subject application after issuance of the final Office action. Applicant’s notice of appeal is limited to the application in Class 25. Further, applicant’s petition to revive did not address the deleted goods in International 12, but was directed solely to the Class 25 goods. As a result, the identification of Class 12 goods presently does not include the indefinite language in question. Ser. No. 79068594 4 Applicant and the examining attorney have filed briefs on the issue under appeal. Likelihood of Confusion 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, 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, 27 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). The Goods Our likelihood of confusion determination is based upon the goods as they are identified in the application and registration at issue. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); and In re William Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB 1976). See also Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that Ser. No. 79068594 5 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 observe in this case that applicant’s identification of goods indicates that all of the clothing items listed therein are intended for use by “bikers.” Registrant’s identification of goods does not contain any language limiting the intended users of its recited clothing items. As a result, we must presume that at least some of the items in registrant’s unrestricted identification of goods are suitable for use by “bikers” as well as the general public. We further observe that certain of the goods identified in applicant’s application, i.e., “suits,” “overalls,” “socks,” “sweaters,” “jackets,” “belts,” and “gloves” are identical to goods identified in the cited registration. We also find that many of the other goods identified in the cited registration are clothing items that are similar and related to the clothing items identified in the involved application. Thus, we find that the second du Pont factor weighs in favor of a finding of likelihood of confusion. Ser. No. 79068594 6 Channels of Trade and Classes of Consumers When identical goods or services are recited in an application and registration with no limitations as to their channels of trade or classes of consumers, such channels of trade and classes of consumers must be considered to be legally identical. See In re Smith and 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.”). Again, although applicant’s goods are limited to bikers, registrant’s identification contains no restriction, and therefore at least some of the registrant’s goods must be deemed to be sold to bikers. We find, therefore, that registrant’s and applicant’s legally identical goods would be marketed in the same trade channels and to the same classes of purchasers. For this reason, we are not persuaded by applicant’s argument that registrant only manufactures and sells clothing to other clothing manufacturers, who in turn sell their clothing products to the U.S. consumer under their own brand names. The third du Pont factor accordingly weighs in favor of a finding of likelihood of confusion. Ser. No. 79068594 7 The Marks We now consider the similarities and dissimilarities between the marks. In coming to our determination, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test 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 their entireties that confusion as to the source of the goods offered under the respective marks is likely to result. In this case, with the exception of the inclusion of the French accent aigu in applicant’s mark, we find that the word portion of applicant’s mark is identical to the word portion of the mark in the cited registration in sound, and nearly identical in appearance inasmuch as they comprise the identical term “éclat.” In terms of connotation, we find that the connotations of the marks are identical. To the extent that consumers would understand the meaning of the foreign word “éclat,” this term has the same meaning in both marks, regardless of whether the accent mark is included. And for those consumers who are not familiar with this word, “éclat” will appear as the Ser. No. 79068594 8 identical arbitrary term. In addition, we find that the highly stylized arrowhead design in applicant’s mark is insufficient to distinguish it from registrant’s mark which consists of “eclat” and a shaded oval border. Regardless of whether consumers will recognize the design in applicant’s mark as an arrowhead, it remains visually less prominent than the wording “éclat” and otherwise serves to draw attention to the term. We further note that when a mark comprises both a word and a design, the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For this reason, we consider the word portion, i.e., “éclat” or “elcat” to be the dominant feature of both marks. We further find that the marks convey the same overall commercial impression. In view of the foregoing, we find that, when applicant’s mark and registrant’s mark are compared in their entireties, they are sufficiently similar in appearance, sound, connotation and commercial impression that, if used in connection with identical or otherwise related goods, confusion would be likely to occur. As such, this du Pont factor favors a finding of likelihood of confusion. Ser. No. 79068594 9 Potential Consent Agreement Finally, applicant asserts that it is seeking registrant’s consent to registration of the subject mark, and that it “is confident that [registrant] will sign a Letter of Consent in the near future.”4 No such agreement has been submitted. While an agreement by the cited registrant consenting to applicant's registration would be entitled to “great weight,” see, e.g., In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071, 1072 (Fed. Cir. 1993); Bongrain Int'l (Am.) Corp. v. Delice De France, Inc., 811 F.2d 1479, 1485, 1 USPQ2d 1775, 1778 (Fed. Cir. 1987), it does not appear on this record that applicant and the registrant have reached any agreement. Furthermore, to the extent that applicant’s arguments may be construed as a request to suspend the appeal and remand the application, we observe that the Board will grant a request to remand an application to the examining attorney for consideration of a consent agreement at any time prior to the rendering of the Board’s final decision on the appeal, if the request is accompanied by the consent agreement. See Trademark Rule 2.142(d). See also TBMP § 1207.02 (3d ed. rev. 2012) and authorities cited therein. 4 Applicant’s brief, p. 1. Ser. No. 79068594 10 However, in this case we do not have a consent agreement. Although applicant may intend to seek a consent from registrant, no such agreement has been reached and no such agreement is of record. We also observe that applicant never requested suspension of the appeal in order to pursue negotiations to obtain a consent agreement, although presumably applicant intended to approach the registrant at the time it filed its appeal brief. Instead, applicant allowed the Board to proceed with the appeal, including the submission of the examining attorney’s appeal brief. We further note that, although applicant indicated on January 17, 2012 that it would seek a consent, to date no such consent has been received. Conclusion In light of the foregoing, we conclude that consumers familiar with registrant’s goods sold under its above- referenced mark would be likely to believe, upon encountering applicant’s goods rendered under the applied- for mark, that the goods originated with or are somehow associated with or sponsored by the same entity. Decision: The refusal of registration under Trademark Act Section 2(d) is affirmed.