WIKO

Trademark Trial and Appeal BoardApr 8, 2019

EX (T.T.A.B. Apr. 8, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: April 8, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re WIKO _____ Serial No. 79187934 _____ H. David Starr of Muncy, Geissler, Olds & Lowe, P.C. for WIKO Jonathan R. Falk, Trademark Examining Attorney, Law Office 111, Chris Doninger, Managing Attorney. _____ Before Adlin, Heasley, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background and Evidentiary Matter WIKO (“Applicant”) requested an extension of protection seeking registration on the Principal Register of the mark WIKO GAME CHANGER in standard characters for: Telephones, mobile telephones, smartphones, component parts of mobile telephones and smartphones; accessories Serial No. 79187934 - 2 - for mobile phones and smartphones, namely, earpieces, headsets, in-ear headphones, hands-free microphones, hands-free kits, covers, cases and protective covers for mobile telephones and smartphones, charging units for mobile telephones and smartphones, batteries for mobile telephones, stands and docking stations for connecting mobile telephones and smartphones; stands specially designed for holding mobile telephones and smartphones, digital tablets and handheld computers; accessories for digital tablets and hand-held computers, namely, earpieces, headsets, in-ear headphones, hands-free kits, kits being hands-free kits, covers, cases and protective covers for digital tablets and hand-held computers, chargers for digital tablets and hand-held computers, batteries for digital tablets and hand-held computers; stands and docking stations specially designed for holding digital tablets and hand-held computers; recorded computer operating programs for use with smartphones and computer tablets, covers and bags adapted for laptops, mobile telephones and digital tablets in International Class 9.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the following two registered marks, owned by different entities: WICO in standard characters for “Computer stylus; Instrument to facilitate text-messaging in the nature of a stylus-type device that is attached to the hand for use in conjunction with personal digital assistants” in International Class 9 (‘905 Registration).2 1 Application Serial No. 79187934 is based on Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), relying on International Registration Number 1271789, and has a filing date of April 8, 2016. 2 Registration No. 4255905 issued December 11, 2012, and has been maintained. Serial No. 79187934 - 3 - GAMECHANGER in standard characters for “Computer application software for mobile phones” in International Class 9 (‘759 Registration).3 After the Examining Attorney made the refusal final, Applicant requested reconsideration and appealed. After the Examining Attorney denied reconsideration, the appeal resumed, and the case has been briefed. Before turning to the merits, we sustain the Examining Attorney’s objection to Applicant’s reliance on links in its Appeal Brief to its website and Facebook page. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides that the record should be complete prior to the filing of an appeal. See also In re Procter & Gamble Co., 105 USPQ2d 1119, 1120 (TTAB 2012) (applicant’s discussion in its brief of third-party registrations not considered because the registrations were not properly introduced during the examination process); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1203.02(e) (2018) (“Evidentiary references made in briefs but not supported by timely submissions may not be considered.”). In addition, providing links to content on the Internet does not by itself suffice to introduce the websites or underlying material into evidence. See In re Olin, 124 USPQ2d 1327, 1331 n.15 (TTAB 2017) (citing In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013)). II. Likelihood of Confusion Our determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. Du Pont de 3 Registration No. 3800759 issued June 8, 2010, and has been maintained. Serial No. 79187934 - 4 - Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “Du Pont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Two key considerations are the similarities between the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A. Similarity of the Marks We first turn to the Du Pont factor comparing WIKO GAME CHANGER to each of the cited marks “in their entireties as to appearance, sound, connotation and commercial impression.” 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 test assesses not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the goods offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). Serial No. 79187934 - 5 - 1. ‘905 Registration: WICO In comparing WIKO GAME CHANGER to WICO, the Examining Attorney asserts that because the first word of the applied-for mark is “virtually identical” to, and phonetically equivalent to, the cited mark, they also create a similar impression and are similar overall. He argues that the additional wording GAME CHANGER does not distinguish Applicant’s mark from the cited mark. Applicant counters that the GAME CHANGER element in its mark sufficiently distinguishes them, and that even the arguably common element differs, because consumers would be more likely to perceive the cited mark WICO as suggesting or evoking “wilco” than as similar to WIKO. Elsewhere in its Brief, Applicant also argues that its mark conveys the impression that “‘WIKO is changing the game’ or ‘Game Changer’ would be understood as a particular product under the WIKO line of products.”4 We find the marks similar overall. WIKO in Applicant’s mark looks nearly identical to WICO. Indeed, as the first word in Applicant’s mark, WIKO is “most likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). WIKO and WICO are spelled almost the same, and the Board has often found in analogous circumstances that marks differing by only a single letter are confusingly similar. See Interlego AG v. Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862, 1863 (TTAB 2002) (“Obviously, the marks LEGO and MEGO are extremely similar in that they differ simply by one letter.”); In re Total Quality Grp. Inc., 51 USPQ2d 1474, 1476 (TTAB 1999) 4 11 TTABVUE 10 (Applicant’s Brief). Serial No. 79187934 - 6 - (“Applicant’s mark STRATEGYN and registrant’s mark STRATEGEN are phonetic equivalents and differ by only one letter.”). They also likely would have the same pronunciation, as often the letter “C” followed by the letter “O” is pronounced as a hard “C,” in which case the cited mark would sound the same as the WIKO element of Applicant’s mark. See Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962) (TINTZ merely a phonetic spelling of “tints”). We do not agree with Applicant’s unsupported contention that consumers would view the cited mark as more similar to “wilco” than to WIKO, given that WIKO and WICO look and sound more alike. Here, WIKO and WICO, as apparently coined terms, have no particular meaning, and thus also convey a similar commercial impression that comes from their visual similarity and phonetic equivalence. Also as to commercial impression, we agree with Applicant’s acknowledgment that in the context of its WIKO GAME CHANGER mark, “‘Game Changer’ could be understood as a particular product under the WIKO line of products.”5 But given the strong similarity between WIKO and WICO, consumers could just as easily view “GAME CHANGER” as a particular product under the WICO line. Given this, while the GAMECHANGER wording in Applicant’s mark creates some difference, the addition of this term to the nearly identical term WIKO does not obviate the similarity in the marks. See Apple Comput. v. TVNET.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007) (VTUNES.NET vs. ITUNES); cf. Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL 5 11 TTABVUE 10 (Applicant’s Brief). Serial No. 79187934 - 7 - LANCER and design and BENGAL confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar). Rather, consumers could easily be confused between WICO and WIKO, and therefore be confused as to the marks in their entireties, to the extent they view WIKO as a house mark naming the product line. We therefore find the marks similar overall in appearance and sound, as well as in commercial impression. See Nat’l Data Corp., 224 USPQ at 751 (“[I]n articulating reasons for reaching a conclusion on the issue of confusion, 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”); see also Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). This factor supports a likelihood of confusion. 2. ‘759 Registration: GAMECHANGER Turning to the comparison of the cited GAMECHANGER mark to WIKO GAME CHANGER, we start with the premise that consumers would view the GAME CHANGER portion of Applicant’s mark as the product name, as Applicant has alleged.6 This portion of Applicant’s mark is identical to the cited mark, except for the space, which is inconsequential. See, e.g., Seaguard Cor. V. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 6 11 TTABVUE 10 (Applicant’s Brief). Serial No. 79187934 - 8 - 1984) (“There can be little doubt that BEEFMASTER and BEEF MASTER are practically identical”). GAMECHANGER and WIKO GAME CHANGER therefore look and sound similar because of the common wording. Turning to the connotation, to the extent that Applicant contends, without evidentiary support, that its mark would be understood as “WIKO is changing the game,” while the cited GAMECHANGER mark would convey “something to do with sports or games,”7 we disagree that the same term would have a different meaning for Applicant’s mobile phone-related goods on the one hand and Registrant’s mobile phone software on the other. As to commercial impression, consumers viewing the GAME CHANGER component of WIKO GAME CHANGER as a product name in a line of WIKO products illustrates how the marks would be perceived as alike in their overall meaning and commercial impression, regardless of the additional matter in Applicant’s mark. WIKO, perceived as the product line name, would do little to alleviate confusion. Thus, while we consider Applicant’s WIKO GAME CHANGER in its entirety, Applicant’s own characterization of its mark conveys how consumers could likely find its mark confusingly similar to GAMECHANGER. See Nat’l Data Corp., 224 USPQ at 751; see also Stone Lion Capital Partners, 110 USPQ2d at 1161. This factor supports a likelihood of confusion. B. The Goods, Trade Channels, and Classes of Consumers [“[L]ikelihood of confusion can be found ‘if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that 7 Id. Serial No. 79187934 - 9 - they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs., 101 USPQ2d at 1722 (internal citations omitted).] In analyzing the second Du Pont factor, we look to the identifications in the application and cited registrations. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); Stone Lion Capital Partners, 110 USPQ2d at 1162; Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “[I]t is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods [or services] within a particular class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); see also Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). 1. The Goods in the ‘905 Registration: WICO The ‘905 Registration identifies computer styluses among its goods, and Applicant’s goods include “component parts of mobile telephones and smartphones” as well as a variety of accessories for mobile phones and smartphones, such as phone and tablet cases and protective covers and earpieces. The Examining Attorney submitted persuasive evidence that consumers are accustomed to encountering the applied-for and cited goods under the same mark. For example: The Best Buy website shows phone and tablet cases as well as styluses under the same INSIGNIA mark.8 8 July 28, 2016 Office Action at 24-26 (bestbuy.com). Serial No. 79187934 - 10 - The Best Buy website features APPLE styluses and APPLE “Accessories” for smartphones and tablets.9 The Target website offers styluses and tablet cases under the same TARGUS mark.10 The Target website promotes the GRIFFIN Zig Zag Stylus as well as the GRIFFIN Technology Survivor tablet case.11 The Samsung website offers styluses and earpieces under the SAMSUNG mark.12 The Samsung website offers styluses and tablet covers with the GALAXY mark.13 Overall, this evidence demonstrates that Applicant’s goods are related to the goods in the ‘905 Registration. We reject Applicant’s argument that the lack of “third-party registrations containing the goods of both the Applicant and the cited registrant” is fatal to the refusal.14 Applicant points to no case law for the proposition that any specific type of evidence, much less third-party registration evidence in particular, is essential. Where the record, such as in this case, includes substantial evidence of consumer exposure to the relevant goods being offered under the same mark, this suffices to establish relatedness regardless of whether the record also includes use- based third-party registrations. See, e.g., Detroit Athletic Co., 128 USPQ2d at 1051- 52 (affirming relatedness of goods and services where the record included 9 Id. at 27-28. 10 September 18, 2017 Office Action at 15-16 (target.com). 11 Id. at 17-18. 12 Id. at 10-12 (Samsung.com). 13 Id. 14 11 TTABVUE 13 (Applicant’s Brief). Serial No. 79187934 - 11 - marketplace evidence of a single mark for both, but no third-party registrations listing the same goods and services under one mark). The second Du Pont factor therefore weighs in favor of a finding of likely confusion as to the ‘905 Registration. 2. The Goods in the ‘759 Registration: GAMECHANGER This cited registration includes “[c]omputer application software for mobile phones” while Applicant identifies goods that include “recorded computer operating programs for use with smartphones and computer tablets.” The Examining Attorney has alleged that the cited registration’s broad identification of computer application software for mobile phones encompasses Applicant’s operating programs for smartphones. See, e.g., In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Based on the language in the identifications, Applicant does not dispute the Examining Attorney’s assertion. Applicant’s only argument against the relatedness of these goods impermissibly attempts to collaterally attack and limit the identification in the cited registration, which Applicant contends is “an obsolete and overruled identification in contravention of the Office’s current policy.”15 According to Applicant, we should consider extrinsic marketplace evidence of the alleged nature of the registrant’s software to narrow the identification and distinguish it from Applicant’s goods. However, we may not do so, as we find the plain language in the cited registration 15 11 TTABVUE 11 (Applicant’s Brief). Serial No. 79187934 - 12 - clear and unambiguous, needing no interpretation. Cf. In re Trackmobile, Inc., 15 USPQ2d 1152 (TTAB 1990) (considering extrinsic evidence to interpret “vague” terminology with special meaning in the industry). Therefore, we must rely on the identifications of goods, not extrinsic evidence. Octocom Sys., 16 USPQ2d at 1787. We rejected an argument very similar to Applicant’s in In re Solid State Design Inc., 125 USPQ2d 1409 (TTAB 2018), wherein the applicant contended that the cited registration’s unrestricted recitation of “software” violated USPTO rules for specificity, and should be limited to software of a particular type. We held that regardless of the failure of the cited registration to indicate the function of the software, as required by current USPTO policy, the Board “lack[s] the authority to read limitations into the identification.” Id. at 1413-14. We pointed to “the controlling principle that where the goods in an application or registration are broadly described, they are deemed to encompass ‘all the goods of the nature and type described ….’” Id. at 1413 (citation omitted). Any issues an applicant has with the breadth of an identification in a cited registration must be addressed by obtaining consent from the owner of the cited registration or seeking a restriction of the registration under Section 18 of the Trademark Act, 15 U.S.C. § 1068. Id. at 1409. Considering the identifications in the cited registration and application, we find that on their face, both include programs and software for mobile phones, such that they at least are complementary and related. See Hewlett-Packard Dev. Co. v. Vudu, Inc., 92 USPQ2d 1630, 1633 (TTAB 2009) (computer software and personal and gaming computers could be used together and are complementary and related). Serial No. 79187934 - 13 - Considering this and bearing in mind the Examining Attorney’s unrebutted assertion, the second Du Pont factor therefore also weighs in favor of a finding of likely confusion as to the ‘759 Registration. 3. Trade Channels and Classes of Consumers Because Applicant’s goods and the goods in the ‘759 Registration are for use on the same devices by the same users, we find at least some overlap in the trade channels and consumers. As to the ‘905 Registration, the third-party Internet evidence discussed above also shows that these goods are promoted and sold through the same websites to the same consumers. Thus, at least some of the trade channels and consumers are the same, and the third Du Pont factor also weighs in favor of a finding of likely confusion as to both cited registrations. III. Conclusion The overall similarity of these marks for related goods that move in some of the same channels of trade to the same classes of customers renders confusion likely as to both cited registrations. Decision: The refusal to register Applicant’s mark is affirmed.