Woom GmbHv.Woom Industria e Comercio de Roupas Ltda

Trademark Trial and Appeal BoardFeb 5, 2020

91238245 (T.T.A.B. Feb. 5, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: February 5, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Woom GmbH v. Woom Industria e Comercio de Roupas Ltda. _____ Opposition No. 91238245 _____ Dwayne K. Goetzel of Meyertons Hood Kivlin Kowert & Goetzel P.C., for Woom GmbH. Matt Kulseth of Kulseth Law P.L.L.C. d/b/a Mighty Marks, for Woom Industria e Comercio de Roupas Ltda. _____ Before Zervas, Kuczma and Hudis, Administrative Trademark Judges. Opinion by Hudis, Administrative Trademark Judge: Woom Industria e Comercio de Roupas Ltda. (“Applicant”) seeks registration on the Principal Register of the mark WOOM (in standard characters) for: Bicycle gloves; crop tops; cycling bib shorts; cycling shorts; hats; jackets for cycling; polo shirts; socks; tank tops; triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, Opposition No. 91238245 - 2 - triathlon suits; windbreakers; athletic pants; cap visors; cyclists' jerseys; running suits; swim suits in International Class 25.1 In its Notice of Opposition,2 Woom GmbH (“Opposer”) opposes registration of Applicant’s WOOM mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the basis of alleged likelihood of confusion with Opposer’s registered WOOM (Stylized) mark in the following format: for: Head protection, namely bicycle helmets in International Class 9. Bicycles, folding bicycles, electric bicycles and electric collapsible bicycles, frames for bicycles, bicycle seat posts, stems for bicycles, bicycle forks, bicycle saddles, bicycle tires, handle bars for bicycles, bicycle carriers for vehicles; baskets adapted for cycles; bicycles components, namely, bicycle chains, cranks, brakes, tubes, spokes, seats, gears, derailleurs, kickstands, and pedals; bicycles accessories, namely, bicycle horns, bells, lights, locks, air pumps, stands, water bottle carriers, fenders, mudguards, cages, tools, trailers, mirrors, and racks in International Class 12. Sporting articles, namely knee pads and work-out gloves in International Class 28. Retail and wholesale store services and advertising services relating to bicycles and bicycles accessories, bicycle helmets, bicycle footwear, and bicycle headgear in International Class 35.3 In its Answer,4 Applicant denies the salient allegations of the Notice of Opposition. Applicant’s Answer also contains six affirmative defenses. However, since Applicant 1 Application Serial No. 87469714 filed on May 31, 2017, under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. 2 1 TTABVUE. References to the pleadings, the evidence of record and Opposer’s brief refer to the Board’s TTABVUE docket system. Coming before the designation TTABVUE is the docket entry number; and coming after this designation are the page or paragraph references, if applicable. 3 Registration No. 5075823, issued on the Principal Register on November 8, 2016. 4 4 TTABVUE. Opposition No. 91238245 - 3 - did not pursue any of these defenses at trial or during briefing they are waived. Syndicat Des Proprietaires Viticulteurs De Chateauneuf v. Pasquier DesVignes, 107 USPQ2d 1930, 1931 n.6 (TTAB 2013) (affirmative defenses neither pursued at trial nor argued in brief waived). While it did file an Answer to the Notice of Opposition, Applicant submitted neither evidence nor a trial brief. Notwithstanding Applicant’s failure to participate at trial, Opposer still bears the burden of establishing its standing and Section 2(d) claim by a preponderance of the evidence. See Jansen Enters., Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007). Having considered the evidentiary record and the Opposer’s arguments, we sustain the Opposition. I. The Evidentiary Record The record consists of the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of Applicant’s involved WOOM application. In addition, Opposer introduced the following evidence: • A soft copy, as well as a database printout from the online records of the U.S. Patent and Trademark Office (USPTO), of Opposer’s WOOM Registration No. 5075823, attached to Opposer’s Notice of Opposition (1 TTABVUE 17-20). • Testimony Declaration of Mathias Ihlenfeld (Ihlenfeld Decl.), Managing Director of Woombikes USA, LLC, with exhibits (Opposer’s Registration, current and historical pages from Opposer’s website, third-party online reviews of Opposer’s products, awards granted to Opposer, Opposer’s presence on social media, and products bearing Opposer’s WOOM (Stylized) mark) (7 TTABVUE). • Opposer’s Notice of Reliance (Opp NOR), with exhibits (Opposer’s Registration, Applicant’s Application, third-party registrations, historical pages from Opposer’s website, third-party online reviews of Opposer’s products, awards Opposition No. 91238245 - 4 - granted to Opposer, Opposer’s presence on social media, and current pages from Applicant’s website) (8 TTABVUE).5 II. Standing and Priority Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co. Inc., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). An Opposer may establish its standing by properly making of record its pleaded registration, if it is the basis for a likelihood of confusion claim that is not wholly without merit. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); see also Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012). Here, Opposer properly made its WOOM (Stylized) registration (showing current status and Opposer’s ownership thereof) of record under Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1),6 establishing its standing. Because Opposer’s pleaded registration is of record, and Applicant did not counterclaim to cancel it, priority is not at issue as to the mark and goods covered by the registration. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1436 n.7 (TTAB 2012). 5 It was not necessary for Opposer to file many of its exhibits twice. This practice, which we discourage, unnecessarily enlarges the evidentiary record that the Board must review. Additionally, the awards bestowed on Opposer are not admissible by way of Notice of Reliance. However, since this same evidence was submitted with the Ihlenfeld Declaration, and Applicant did not object to its admission, we will consider the awards for what they show on their face. 6 Notice of Opposition, Exh. C, 1 TTABVUE 17-20. Opposition No. 91238245 - 5 - III. Likelihood of Confusion We now consider the substantive claim before us. Trademark Act Section 2(d), 15 U.S.C. § 1052(d), prohibits the registration of a mark that [c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. Our analysis is based on all of the probative evidence of record. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In making our determination, we consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less weighty roles in any particular determination”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (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 Opposition No. 91238245 - 6 - marks.”). These factors, and the other DuPont factors argued by Opposer, are discussed below. A. Comparison of the Parties’ Marks We first consider the similarity or dissimilarity of the parties’ WOOM (Stylized) and WOOM marks in their entireties as to appearance, sound, connotation, and commercial impression, the first DuPont factor. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. Krim-Ko Div. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). Except for the stylization of Opposer’s WOOM (Stylized) mark, the parties’ marks otherwise are identical. However, Applicant applied to register its WOOM mark in standard characters. “‘Standard character’ or ‘typed’ registrations are federal mark registrations that make no claim to any particular font style, color, or size of display and, thus, are not limited to any particular presentation[,]” Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing Trademark Rule 2.52, 37 C.F.R. § 2.52, and Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971)), “including … in a manner that resembles the format of the [Opposer’s] … mark.” In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909, (Fed. Cir. 2012). See also SquirtCo v. Tomy Corp., 697 F.2d Opposition No. 91238245 - 7 - 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (rejecting argument that SQUIRT SQUAD in standard letters is distinct from SQUIRT registered in “distinctive lettering on a dark medallion”; “[b]y presenting its mark merely in a typed drawing, a difference cannot legally be asserted by that party.” (emphasis in original)). We therefore find that, when judged by the elements of appearance, sound, connotation, and commercial impression, the legal identity of the parties’ marks supports an ultimate finding of likely confusion. B. Comparison of the Parties’ Goods and Trade Channels We now turn to the comparison of the goods at issue, the second DuPont factor. In making our determination regarding the relatedness of the parties’ goods, we must look to the goods as identified in Applicant’s application and Opposer’s registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that 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.”)); see also Paula Payne Prods. Co. v. Johnson Publ’g Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.”). We do not read limitations into the identifications of either party. See Squirtco, 216 USPQ at 940 (“There is no specific limitation here, and nothing in the inherent Opposition No. 91238245 - 8 - nature of [registrant’s] mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The board, thus, improperly read limitations into the registration.”). Moreover, we need not consider whether each of Opposer’s identified goods is related to Applicant’s goods for purposes of a DuPont analysis, it is sufficient if likelihood of confusion is found with respect to use of an applicant’s mark in connection with any product or service in a particular International Class. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007). While Applicant’s goods are clothing items specifically intended for bicycle riding and triathlons, Opposer’s goods are bicycles, bicycle components, bicycle accessories, including bicycle helmets, knee pads and work-out gloves, and store and advertising services relating thereto. While the parties’ descriptions of goods alone are enough to establish their relatedness,7 Opposer made of record 11 active third party registrations whose identifications of goods include Opposer’s goods and Applicant’s goods. Mark Registration No. Goods MELE E PERE 5601267 bicycle gloves and triathlon clothing GADAG 5592026 bicycle gloves and triathlon clothing JustVH 5582151 bicycle gloves and triathlon clothing SUGO 5501263 bicycle gloves and triathlon clothing ItalVega 5486448 bicycles, bicycle parts and accessories and clothing 7 See, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 101, 1004 (Fed. Cir. 2002) (when addressing the issue of likelihood of confusion, the court held that the respective identifications of goods were, themselves, evidence of the relatedness of the parties’ goods, and extrinsic evidence of relatedness was not per se required). Opposition No. 91238245 - 9 - Mark Registration No. Goods SPORTIUM 5144168 bicycle parts, sports and outdoor wear for men, women and children, and triathlon wetsuits MEC 5111827 bicycles, bicycle parts, outerwear, underwear and triathlon training services MESSKO BIKE 4894394 bicycles, bicycle parts, sports clothing and triathlon services All4Cycling 4857312 bicycles, bicycle parts and triathlon clothing HEAVY PEDAL 4681363 bicycles, bicycle parts, athletic apparel and triathlon clothing BIKE RELIGION 4047966 bicycles, athletic apparel and triathlon clothing8 Although active third-party registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless have probative value to the extent that they serve to suggest that the goods listed therein are of a kind that may emanate from a single source under a single mark. See, e.g., Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1432 (TTAB 2013) (finding that third-party registrations covering both wine and water were probative of the relatedness of those beverages). As to trade channels, the third DuPont factor, regardless of the parties’ actual business activities, the goods in an application or registration are construed to include all goods of the type identified, sold in all normal channels of trade for such goods, to all usual purchasers of them. Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1825-26 (TTAB 2009). Further, in the absence of specific 8 Opp NOR, 8 TTABVUE, Exh 3, 18-77. Opposition No. 91238245 - 10 - limitations in Opposer’s registration, we must presume that the identified goods will be marketed in all normal and usual channels of trade and methods of promotion. Squirtco, 216 USPQ at 939. We thus find that the parties’ goods are related and that the channels of trade in which the respective goods travel overlap. These factors support an ultimate finding of likely confusion. C. Other Evidence on the Question of Likelihood of Confusion Opposer also made of record substantial evidence showing the use of its WOOM (Stylized) mark in connection with bicycles, bicycle accessories, and biking-related clothing,9 its presence on social media platforms10 and non-solicited media attention as well as awards directed toward Opposer’s mark and products.11 All of this evidence relates to the use of Opposer’s WOOM (Stylized) in the United States by Woombikes USA, LLC since 2014, under exclusive authorization by Opposer and for Opposer’s benefit.12 Such evidence normally would contribute toward a finding that Opposer’s WOOM (Stylized) mark had acquired market strength – that is, the extent to which the relevant public recognizes Opposer’s mark as denoting a single source. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). Given the other 9 Ihlenfeld Decl., Exhs B, D, E, F, G and Q, 7 TTABVUE 12-14, 18-35 and 112-124; Opp NOR, Exh 4(a), 8 TTABVUE 78-107. 10 Ihlenfeld Decl., Exh P, 7 TTABVUE 105-111; Opp NOR, Exh 4(c), 8 TTABVUE 276-281. 11 Ihlenfeld Decl., Exhs H, I, J, K, L, M, N and O, 7 TTABVUE 36-104; Opp NOR, Exh 4(b), 8 TTABVUE 108-260. 12 Ihlenfeld Decl., 7 TTABVUE 4, ¶¶ 1-3. Opposition No. 91238245 - 11 - likelihood of confusion factors in Opposer’s favor, however, we do not need to discuss this evidence further. We additionally treat all of the other DuPont factors as neutral. D. Likelihood of Confusion – Summary The first, second and third DuPont factors favor a finding of likelihood of confusion. The parties’ marks are legally identical, the parties’ goods are related, and the parties’ channels of trade overlap. Opposer has met its burden of establishing its Section 2(d) likelihood of confusion claim by a preponderance of the evidence. IV. Decision Opposer has made of record sufficient evidence of its trademark priority, standing to maintain this Opposition and likelihood of confusion. We therefore sustain the Opposition. Registration of Applicant’s WOOM mark is thus refused.