Yinet Maldonado

Trademark Trial and Appeal BoardNov 28, 2017

No. 87245156 (T.T.A.B. Nov. 28, 2017)

This Opinion is Not a Precedent of the TTAB Mailed: November 28, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Yinet Maldonado _____ Serial No. 87245156 _____ Gene Bolmarcich of Law Offices of Gene Bolmarcich for Yinet Maldonado Angela Duong, Trademark Examining Attorney, Law Office 104, Dayna Browne, Managing Attorney. _____ Before Bergsman, Shaw, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background Yinet Maldonado (“Applicant”) seeks registration on the Principal Register of the mark for “Computer games software for use on personal computers and Serial No. 87245156 - 2 - mobile devices” in International Class 9, “Clothing, namely, t-shirts, pajamas and hats” in International Class 25, and “Toys, namely, dolls, action figures, and board games” in International Class 28.1 Applicant described the mark as follows: The mark consists of ‘Zilly’ is [sic] an animated cartoon character, part of ZillyPlanet. The character resembles a Bee. The character has a power button on the chest, solar panel wings and super power antennas and earphones. The stylized letters are round font with a rounded curve over the letter and antennas over the letter ‘I’. The Examining Attorney has finally 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 five registered marks, and all but the last one belong to the same owner: • ZILLI for “shirts, scarves, trousers, sweaters, coats, ties, jackets” in International Class 25;2 • BY ZILLI in standard characters for goods including “Clothing, namely, trousers, sweaters, t-shirts, tops, vests, coats, jackets, footwear, headgear, namely, headwear, caps, hats; shirts; clothing of leather or imitations of leather, namely, trousers, sweaters, t-shirt, vests, coats, jackets; Belts; gloves as clothing; Scarves; Ties; Hosiery; Socks; Slippers; Beach shoes, skiing and sports shoes; Underwear” in International Class 25;3 1 Application Serial No. 87245156 was filed November 22, 2016, based on a declared bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 2 Registration No. 1736722 issued December 1, 1992, based on use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), and has been renewed. Although not explicitly designated a standard-character mark, this registration has a typed drawing and the USPTO database designates it with the mark drawing code for a typed drawing, the legal equivalent of standard characters used prior to November 2, 2003. See Trademark Manual of Examining Procedure (“TMEP”) §§ 807.03(i), 807.18 (Oct. 2017); see also Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1287 (Fed. Cir. 2016) (“typed form, which is equivalent to standard characters”). 3 Registration No. 4758945 issued June 23, 2015 based on Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e). Serial No. 87245156 - 3 - • ZILLI THE FINEST GARMENT FOR MEN IN THE WORLD in standard characters for goods including “Clothing, namely, footwear and head wear” in International Class 25;4 • for goods including “Shirts, scarves, trousers, sweaters, coats, ties, jackets, leather jackets, coats, leather coats, fur coats and jackets, suits, suit coats, sport coats, shoes, leather belts, headgear, namely, headwear, neckties, garments of leather and/or fur, namely, jackets, vests, leather and fur coats with linings of leather, cashmere, wool or camel’s hair” in International Class 25;5 and • for “Children’s educational software; communication software for providing access to the Internet” in International Class 9.6 We affirm the refusal. II. Likelihood of Confusion The determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de 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). In any likelihood of confusion analysis, two key considerations are the similarities between 4 Registration No. 3972922 issued June 7, 2011 based on Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e); a combined declaration under Sections 8 and 15 is pending. 5 Registration No. 3964128 issued May 24, 2011 based on Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e); Section 8 declaration accepted and Section 15 declaration acknowledged. 6 Registration No. 4193928 issued August 21, 2012 based on use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Serial No. 87245156 - 4 - the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944 (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.”). In this case, based on the relatively greater similarity of the marks and the goods, we narrow our focus to the cited registration of ZILLI for “shirts, scarves, trousers, sweaters, coats, ties, jackets” (Registration No. 1736722) and the cited registration of for “Children’s educational software; communication software for providing access to the Internet” (Registration No. 419392). See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2008) (confining likelihood of confusion analysis to one of multiple cited registrations deemed closest to the applied-for mark because “if there is no likelihood of confusion between applicant’s mark and [the typed form mark], then there would be no likelihood of confusion with the [word and design mark]”). A. The Goods, Trade Channels, and Classes of Consumers Although Applicant’s Brief does not address the du Pont factors concerning the goods, trade channels and classes of consumers, we address these factors and the relevant evidence in the record regarding them. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845 (Fed. Cir. 2000). As to the goods, we must determine whether their degree of relatedness rises to such a level that consumers Serial No. 87245156 - 5 - would mistakenly believe the goods emanate from the same source. In making this analysis of the second du Pont factor, we look to the identifications of goods in the application and cited registrations. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Also, “it is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods 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). First, within International Class 25, Applicant has identified its goods as clothing, namely, t-shirts, pajamas and hats. The cited ZILLI registration’s identification of goods includes “shirts,” encompassing Applicant’s more specifically identified “t- shirts.” See 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.’”). Thus, the cited ZILLI registration contains goods identical in part to the International Class 25 goods in the application. Second, within International Class 9, Applicant has identified computer games software for use on personal computers and mobile devices. The cited registration covers children’s educational software and communication software for Serial No. 87245156 - 6 - providing access to the Internet. Evidence in the record indicates that children’s educational software often consists of computer learning games. For example, third- party registrations identify children’s educational game software.7 Marketplace evidence also shows that children’s educational software can be games software. For example, under the heading “Educational – fun learning games for kids from preschool on up!,” one website offers a wide variety of online educational games for children.8 Also, the Amazon section for children’s games software features “The Oregon Trail,” educational games software that helps children learn about frontier life,9 and the “Reader Rabbit Kindergarten Educational Computer Game” CD and CD ROM.10 We therefore agree with the Examining Attorney’s unchallenged assertion11 that registrant’s children’s educational software encompasses computer games software for use on personal computers and mobile devices, as identified in the subject application. In addition, even if these goods did not overlap, the record also includes numerous third-party use-based registrations that identify these same types of goods under the same mark, supporting the relatedness of computer games software and 7 TSDR May 15, 2017 Office Action at 6-8 (Reg. 4415128 includes “downloadable children’s educational software and electronic game software featuring learning and entertainment activities….”); id. at 15-18 (Reg. No. 5133965 includes “children’s educational game software”); id. at 22-24 (Reg. No. 4362472 for “Downloadable interactive educational software games that promote character development in children”). 8 TSDR April 13, 2017 Office Action at 6-8 (download-free-games.com). 9 Id. at 9 (amazon.com). 10 Id. at 16 (amazon.com). 11 6 TTABVUE 6 (Examining Attorney’s Brief). Serial No. 87245156 - 7 - children’s educational software.12 Aquamar, 115 USPQ26 at 1126 n.5; In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The record also shows the relatedness of Applicant’s International Class 9 computer games software for use on personal computers and mobile devices to the shirts identified in the cited ZILLI standard-character registration. For example, both the “Minecraft” game for PC/MAC or “for your device” and the “Minecraft Creepy Premium Tee” t-shirt are offered under the same “Minecraft” mark.13 The “World of Warcraft” computer game software and a “World of Warcraft Legion Illidan’s Return” t-shirt are offered under the same “World of Warcraft” mark.14 Use-based third-party registrations identifying both types of goods under the same mark also support the relatedness of t-shirts and computer games software.15 Id. 12 A representative sample includes, e.g. TSDR May 15, 2017 Office Action at 2-5 (Reg. 3446762 includes “computer software and computer and video game discs and cartridges for children’s entertainment and educational purposes” and “children’s educational software”); id. at 9-11 (Reg. No. 4488826 includes “video game cartridges and discs” and “children’s educational software”); id. at 12-14 (Reg. No. 4309827 identifies “Computer game software” and “Educational software featuring instruction in foreign languages”); id. at 19-21 (Reg. No. 4231579 includes “downloadable children’s educational software and electronic game software for infants, toddlers, and children featuring learning and entertainment activities”); id. at 25-27 (Reg. No. 4837238 includes computer game software and children’s educational software); id. at 37-39 (Reg. No. 4627621 includes children’s educational software and video game software). 13 TSDR March 4, 2017 Office Action at 57-58 (minecraft.net and jinx.com). 14 Id. at 61-62 (gamestop.com and jinx.com). 15 TSDR May 15, 2017 Office Action at 76-78 (Reg. No. 5116115 includes both computer game software and T-shirts); id. at 45-48 (Reg. No. 5181969 identifies video and computer game programs, shirts and T-shirts); id. at 37-41 (Reg. No. 4627621 includes video game software as well as shirts and T-shirts). Serial No. 87245156 - 8 - Third, we compare Applicant’s toys, namely, dolls, action figures, and board games in International Class 28 to the goods in the cited registrations. The evidence of record indicates consumer exposure to toys and shirts such as are identified in the ZILLI registration being provided by the same source under one mark. For example, the Marvel website offers toys and action figures and t-shirts under the same “Guardians of the Galaxy” mark.16 The mark “Five Nights at Freddy’s” is used both for action figures and for t-shirts.17 Similarly, “Batman” appears both on t-shirts and as a mark on action figures.18 The record also includes third-party use-based registrations that identify, under the same mark, these same types of goods in the subject application and cited registration, supporting their relatedness.19 Id. We also note that third- party use-based registration evidence also shows that toys such as Applicant’s and children’s educational software such as that identified in the registration are identified under the same third-party marks.20 16 TSDR March 4, 2017 Office Action at 55-56 (shopmarvel.com). 17 TSDR May 15, 2017 Office Action at 82-87 (funko.com). 18 Id. at 82, 85 (funko.com). 19 E.g., TSDR May 15, 2017 Office Action at 31-33 (Reg. No. 4718923 identifies, inter alia, T- shirts, “board games” and “modeled plastic toy figurines”); id. at 2-5 (Reg. 3446762 includes t-shirts, pajamas, and hats, as well as toys such as action figures); id. at 36-38 (Reg. No. 4718923 for T-shirts, board games, and “providing temporary use of non-downloadable interactive games”); id. at 34-36 (Reg. No. 4560409 for T-shirts, board games and “providing temporary use of non-downloadable interactive games”); id. at 55-57 (Reg. No. 5069420 identifies T-shirts and action figures); id. at 69-72 (Reg. No. 5187758 includes t-shirts, and hats, as well as board games and toy figures). 20 E.g., id. at 6-8 (Reg. No. 4415128 includes downloadable children’s educational software and electronic game software, as well as educational board games for children); id. at 9-11 (Reg. No. 4488826 includes action figures, board games, dolls, and children’s educational Serial No. 87245156 - 9 - Thus, the du Pont factor of the similarity of the goods clearly favors a finding of likelihood of confusion. See Tuxedo Monopoly, 209 USPQ at 988 (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the class). As set out above, Applicant’s goods in International Class 25 are legally identical to those in the ZILLI registration and Applicant’s goods in International Class 9 are legally identical to those in the registration. Applicant’s International Class 9 and International Class 28 goods also are related to the goods in the cited registrations, as indicated above. We also find the trade channels and classes of consumers to be the same. We must presume that the goods in International Classes 25 and 9 travel in the same channels of trade as the goods in the cited registrations with which they are legally identical. In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994); see also In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). As to Applicant’s goods in International Class 28, the Examining Attorney submitted ample proof that the goods deemed related above move in the same trade channels to software); id. at 15-18 (Reg. No. 5133965 includes children’s educational games software as well as dolls, board games, and toy action figures); id. at 19-21 (Reg. No. 4231579 includes downloadable children’s educational software and electronic game software, as well as educational board games); id. at 22-24 (Reg. No. 4362372 includes “downloadable interactive educational software games that promote character development in children,” as well as plastic action figures and board games); id. at 37-41 (Reg. No. 4627621 includes children’s educational software, action figures and board games); id. at 63-65 (Reg. No. 5092317 includes children’s educational software and dolls). Serial No. 87245156 - 10 - the same classes of consumers. The evidence discussed above shows that the respective goods are offered through the same retail websites, such as through Marvel’s and Funko’s websites. The DC Comics website also offers both action figures and clothing.21 Similarly, the evidence of the relatedness of shirts to computer games software shows that the same retailers offer both types of goods through their websites. Thus, the goods in the subject application travel in the same channels of trade as those in the cited registrations, and to the same classes of consumers. These du Pont factors weigh in favor of likely confusion. B. Similarity of the Marks The next du Pont factor concerns a comparison of the applied-for and cited marks, which we consider “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports 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. 101 USPQ2d at 1721; see also Edom Labs, 102 USPQ2d 1546, 1551 (TTAB 2012). When the goods are at least in part legally identical, as is the case here, “the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.” Century 21 21 Id. at 88-98 (shopdcentertainment.com). Serial No. 87245156 - 11 - Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). First, we compare to the cited ZILLI standard-character registration, and we find the marks to be similar. The shared term ZILLY/ZILLI creates a visual resemblance between the two marks and makes them sound identical or nearly identical. While with coined terms such as these, “there is no correct pronunciation of a trademark,” Viterra, 101 USPQ2d at 1913, general rules of pronunciation, evidenced in the record, indicate that ZILLY and ZILLI would be pronounced the same.22 Typically, when a mark comprises both wording and a design, greater weight is given to the wording in the likelihood of confusion analysis. See, e.g., Viterra, 101 USPQ2d at 1911; see also In re Max Capital Grp. Ltd., 93 USPQ2d at 1248 (holding applicant’s mark, MAX with pillar design, and registrant’s mark, MAX, likely to cause confusion, noting that the “addition of a column design to the cited mark ... is not sufficient to convey that [the] marks ... identify different sources for legally identical insurance services”). In addition, the cited standard-character mark can be presented in any color, font style or size, and therefore could appear in the same script as the wording in Applicant’s mark. See Viterra, 101 USPQ2d at 1909; see also 37 C.F.R. § 2.52(a). Thus, the only wording in the two marks may look and sound nearly 22 The Examining Attorney submitted online dictionary entries for “li” and “ly” that included pronunciation guides indicating the pronunciation would be identical. TSDR March 4, 2017 Office Action at 13-18 (oxforddictionaries.com). Serial No. 87245156 - 12 - identical. We consider the phonetic equivalence quite significant in the analysis, because consumers likely would focus most on the identical-sounding words for source indication because they would use them to “call for” the goods. See Viterra, 101 USPQ2d at 1909. Also, Applicant has indicated in its mark description that “‘Zilly’ is an animated cartoon character,” as depicted in the mark. In the brief, Applicant argues that its mark “conveys the impression of a ‘cartoon’ character named ‘Zilly.’”23 We find that the human-like bee design reinforces the wording and the overall impression of the mark as the character “Zilly.”24 Thus, despite the relatively larger size of the design in Applicant’s mark compared to the wording, we nonetheless find that the wording, as the name of the character depicted, dominates the mark. Although we have considered the cases cited by Applicant, we do not find them to be sufficiently analogous to be controlling or change our assessment of the marks at issue in this case. See In re Fleet-Wing Corp., 188 F.2d 476, 89 USPQ 369, 370 (CCPA 1951). In the context of partly identical and related goods, because the dominant ZILLY component of Applicant’s mark is almost identical to the cited ZILLI mark, we also find the connotations and commercial impressions of the marks to be very close. For 23 4 TTABVUE 6 (Applicant’s Brief). 24 See TMEP § 1202.10(a) (“The issue of whether a proposed mark identifies only the name or design of a particular character is tied to use of the mark, as evidenced by the specimen. Therefore, unless the record, even without a specimen, reflects that the proposed mark identifies only the name or design of a character, generally no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted specimen(s) with an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §1051(c) or (d).”). Serial No. 87245156 - 13 - this standard-character ZILLI mark, we find no support for Applicant’s assertion that this mark conveys the impression of a designer name.25 Given the similarity in sound, appearance, connotation and commercial impression, driven by the resemblance of the dominant ZILLY component of Applicant’s mark to the cited ZILLI mark, we find the two marks similar overall. See Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000) (“Once all the features of the mark are considered, . . . it is not improper to state that, for rational reasons, more or less weight has been given to a particular feature of the mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties.”). We also note that there are no additional third-party uses of ZILLY/ZILLI in the record to weaken its source- identifying function. Second, we compare Applicant’s mark to the cited mark. These marks share the identical word ZILLY, but the cited mark follows ZILLY with the word DILLY, and the two marks have different design elements. According to the description of the mark in the cited registration, the mark includes “a design resembling a child comprising a gold four point star.”26 Applicant’s design element includes a figure with both human-like and bee-like elements. Apart from this very general similarity of a human-like figure in both marks, the designs otherwise are 25 4 TTABVUE 6 (Applicant’s Brief). 26 TSDR April 13, 2017 Office Action at 2. Serial No. 87245156 - 14 - not similar. However, as noted above, literal elements often receive more emphasis in the analysis because they are used to call for the goods, and as the first word in the cited mark, ZILLY stands out. See Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); see also Palm Bay Imports Inc., 73 USPQ2d at 1692. While the appearance of the marks as a whole has only minimal similarity from the shared literal component, the marks sound more similar, and also have some similarity in connotation and commercial impression both because of the shared term and the general nature of the designs. In the context of children’s educational game software covered by both the cited registration and the application, the marks could be viewed as referring to variations of the same ZILLY character or to related characters. Also, as noted above, we have no evidence of other use of ZILLY in this context. The marks overall are sufficiently similar to weigh in favor of likely confusion. This du Pont factor weighs in favor of likely confusion with each of the cited registrations. D. Conclusion The similarity of Applicant’s mark to the ZILLI mark in Registration No. 1736722 and to the mark in Registration No. 4193928 for in part identical and otherwise related goods that move in the same channels of trade to the same classes of customers renders confusion likely as to goods in each of the three classes identified in the application. Serial No. 87245156 - 15 - Decision: The refusal to register Applicant’s mark based on likely confusion with Registration Nos. 1736722 and 4193928 is affirmed.