Youngone Corporation

Trademark Trial and Appeal BoardNov 8, 2006

No. 78314665 (T.T.A.B. Nov. 8, 2006)

Mailed: Nov. 8, 2006 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Youngone Corporation ________ Serial No. 78314665 _______ Kevin S. Costanza of Seed IP Law Group PLLC for Youngone Corporation. David Taylor, Trademark Examining Attorney, Law Office 112 (Angela Wilson, Managing Attorney). _______ Before Walters, Bucher and Grendel, Administrative Trademark Judges. Opinion by Grendel, Administrative Trademark Judge: INTRODUCTION Applicant seeks registration on the Principal Register of the mark CWS ADVANCED TECHNOLOGIES (in standard character form) for “backpacks” in Class 18, “sleeping bags” in Class 20, “tents” in Class 22, and “clothing, THIS OPINION IS NOT CITABLE AS PRECEDENT OF THE TTAB Ser. No. 78314665 2 namely, outerwear jackets, anoraks, pullovers, vests, parkas, and coats; headwear; and gloves” in Class 25.1 At issue in this appeal is the Trademark Examining Attorney’s final refusal to register the mark, as to all four classes, absent submission of a disclaimer of ADVANCED TECHNOLOGIES apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056. Also at issue on appeal are the Trademark Examining Attorney’s final refusals to register applicant’s mark, as to the Class 25 goods only, on the ground that the mark, as applied to such goods, so resembles each of two previously- registered marks (owned by a single owner) as to be likely to cause confusion, to cause mistake, or to deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d). The first cited registration, Registration No. 2777245, is of the mark CWS (in standard character form) for “apparel, namely blouses, shirts and pants.”2 The second cited registration, Registration No. 2777246, is of the mark depicted below 1 Serial No. 78314665, filed October 16, 2003. The application is based on intent-to-use under Trademark Act Section 1(b), 15 U.S.C. §1051(b). 2 Issued October 28, 2003. Ser. No. 78314665 3 for the same goods, i.e., “apparel, namely blouses, shirts and pants.”3 Both of the cited registrations are registered on the Principal Register. Applicant and the Trademark Examining Attorney each submitted evidence during prosecution of the application. The appeal is fully briefed. DISCLAIMER REQUIREMENT We turn first to the refusal based on applicant’s failure to comply with the Trademark Examining Attorney’s requirement for a disclaimer of ADVANCED TECHNOLOGIES apart from the mark as shown. The Trademark Examining Attorney may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. See Trademark Act Section 6, 15 U.S.C. §1056. Merely descriptive terms are unregistrable, see Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), and therefore are subject to disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer 3 Issued October 28, 2003. Ser. No. 78314665 4 requirement is grounds for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A. 1975); In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1986). A term is deemed to be merely descriptive of goods or services, within the meaning of Trademark Act Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is Ser. No. 78314665 5 being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, it is settled that “[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985). The evidence pertinent to the disclaimer issue is as follows. In its May 9, 2005 response to the Trademark Examining Attorney’s request for information under Trademark Rule 2.61(b), 37 C.F.R. §2.61(b), applicant describes its Class 25 goods as follows: “Applicant’s goods provide superior protection from the elements through the use of a clothing process that does not have traditional stitching, and are instead unified pieces of Ser. No. 78314665 6 clothing with fewer seams and stitching. Applicant’s goods involve a new technique in clothing manufacture, and are not available from other manufacturers.” We take judicial notice of the following dictionary definitions from The American Heritage Dictionary of the English Language (4th ed. 2000).4 The word “advanced” is defined (in pertinent part) as “highly developed or complex,” as “being at a higher level than others: an advanced text in physics,” and as “ahead of the times; progressive: advanced teaching methods.” The word “technology” is defined (in pertinent part) as “the application of science, especially to industrial or commercial objectives,” and as “the scientific method and material used to achieve a commercial or industrial objective.” The Trademark Examining Attorney has made of record printouts from seven third-party registrations of marks which include the words ADVANCED TECHNOLOGIES, in which those words have been disclaimed or are registered pursuant to the acquired distinctiveness provisions of Trademark Act Section 2(f), 15 U.S.C. §1052(f). The registrations cover 4 The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Ser. No. 78314665 7 various goods and services in Classes 2, 9, 19 and 42; none are for clothing or apparel. The Trademark Examining Attorney also has made of record printouts from several Internet websites which show usage of “advanced technologies” in connection with the clothing or apparel industry. These include: Advanced Technologies – CROSSTECH fabric...The cutting edge in technology... (Blauer.com); FIT [Fashion Institute of Technology] is known for its hands-on approach in teaching and demonstrating the most advanced technologies and solutions for successful global apparel operations... (apparelmag.com); A-Z Advanced Technologies ... The A-Z Fiber Form Uniforms fall under the category of “A-Z Advanced Technologies” which plays off of the way that something can be both incredibly primitive and quite sophisticated at the same time.” (zittel.org); and Improved sizing systems based on current population studies (military and civilian) and implemented through advanced technologies and strategies can make sizing a competitive strategy for apparel firms. (topstitch.cornell.edu). Applicant has submitted a printout from what appears to be a commercial search report (the source is unidentified), displaying what applicant asserts are the only three federal registrations, covering Class 25 goods, Ser. No. 78314665 8 of marks which include the words ADVANCED and TECHNOLOGY or TECHNOLOGIES. These marks are ADVANCED MOUNTAIN TECHNOLOGIES (Reg. No. 2441087); STATE OF THE ART TECHNOLOGY THERMORE T37 THE NEW DYNAMIC THERMAL INSULATION TECNOLOGIA AVANZATA LA RIVOLUZIONARIA IMBOTTITURA A TERMICITA DINAMICA, in which TECNOLOGIA AVANZATA is translated as “advance technology,” and is disclaimed (Reg. No. 1685362); and ADVANCED TECHNOLOGY SERVING ATHLETES WORLDWIDE(Reg. No. 1539396). Applicant also has submitted a printout from the Google search engine of the first twenty (of 13,900,000) “hits” retrieved by the search “advanced technologies.” None of the twenty appear to use the words in connection with clothing. Considering all of the evidence and the arguments of counsel, we find that ADVANCED TECHNOLOGIES is merely descriptive of applicant’s goods, and that the Trademark Examining Attorney’s requirement for a disclaimer of such wording is proper. Contrary to applicant’s argument, we find nothing “nebulous” about the words ADVANCED TECHNOLOGIES, whether considered separately or as a composite. Rather, we find that the words immediately and directly convey laudatory and descriptive information to the purchaser about a Ser. No. 78314665 9 feature or characteristic of the goods, i.e., that the goods are designed and manufactured using advanced technologies. With respect to applicant’s Class 25 clothing goods, applicant itself, in stating that the goods “involve a new technique in clothing manufacture, and are not available from other manufacturers,” essentially admits that it uses advanced technologies in manufacturing the goods. Likewise, the Trademark Examining Attorney’s Internet evidence shows that the words “advanced technologies” are used by others in the clothing industry. This third-party usage belies applicant’s argument that the words are “nebulous” or otherwise without a readily apparent meaning as applied to the goods. We also are not persuaded by applicant’s argument that, by combining the words ADVANCED and TECHNOLOGIES, applicant has created a composite which is incongruous, bizarre or otherwise distinctive. Applicant cites prior cases in which marks such as SUGAR & SPICE,5 SNO-RAKE,6 or COLLEGE ACADEMY7 were found to be unique or incongruous and thus not merely descriptive; however, we find it telling 5 In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968). 6 In re Shutts, 217 USPQ 363 (TTAB 1983). 7 In re Harrington, 219 USPQ 854 (TTAB 1983). Ser. No. 78314665 10 that applicant in the present case never explains exactly what is incongruous, bizarre or unique about combining ADVANCED and TECHNOLOGIES into the composite ADVANCED TECHNOLOGIES. We find instead that these words are readily understandable, with nothing unique or incongruous about them or the composite they form. In sum, we find that ADVANCED TECHNOLOGIES is a laudatory and merely descriptive phrase as applied to applicant’s Class 25 clothing items. It also is laudatory and merely descriptive as applied to applicant’s Class 18 “backpacks,” Class 20 “sleeping bags” and Class 22 “tents,” because it directly and immediately informs purchasers that these goods are designed and manufactured using advanced technologies. We therefore affirm the Trademark Examining Attorney’s requirement for a disclaimer of ADVANCED TECHNOLOGIES as to all four classes of goods in the application, and we affirm the refusal to register the mark absent submission of such a disclaimer. SECTION 2(d) REFUSALS We turn next to the Section 2(d) refusals on appeal, which apply only to applicant’s Class 25 goods. To review, applicant seeks registration of CWS ADVANCED TECHNOLOGIES for “clothing, namely outerwear jackets, anoraks, Ser. No. 78314665 11 pullovers, vests, parkas and coats; headwear; and gloves.” The cited registrations are of the marks CWS and C|WS (stylized), both for “apparel, namely blouses, shirts and pants.” Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors). See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Under the first du Pont factor, we must determine the similarity or dissimilarity of the marks when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. Palm Bay Imports, Inc., supra. 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 goods Ser. No. 78314665 12 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). Furthermore, although the marks at issue must be considered in their entireties, 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. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Applying these principles in the present case, we find that applicant’s mark is similar rather than dissimilar to each of the cited registered marks. We are not persuaded by applicant’s arguments to the contrary. First, we cannot agree with applicant’s contention that the wording ADVANCED TECHNOLOGIES is a “strong” feature of applicant’s mark. As discussed above, we find these words to be laudatory and merely descriptive, and that they therefore contribute relatively less to the commercial impression of applicant’s mark than does the initialism CWS. That initialism, clearly, is the dominant Ser. No. 78314665 13 feature of applicant’s mark because it is arbitrary as applied to the goods and because it comes first in the mark. As such, it is entitled to more weight in our comparison of applicant’s mark and the cited registered marks. Although we do not ignore the words ADVANCED TECHNOLOGIES in applicant’s mark, we nonetheless accord them less weight in our comparison of the respective marks. See In re Chatam International Inc., supra, and In re National Data Corp., supra. Viewing the marks in their entireties in terms of appearance and sound, we find that applicant’s mark CWS ADVANCED TECHNOLOGIES is highly similar to the cited ‘245 registered mark insofar as both marks include or consist of the arbitrary designation CWS. For the same reason, applicant’s mark is highly similar to the cited ‘246 registered mark, which likewise includes the letters CWS (albeit separated by a vertical line). The marks look and sound different to the extent that applicant’s mark, but not the registered marks, includes the wording ADVANCED TECHNOLOGIES, but we find that this point of dissimilarity is outweighed by the presence in all of the marks of the letters CWS. In terms of connotation, we find that applicant’s mark is identical to each of the cited registered marks to the Ser. No. 78314665 14 extent that they consist of or include the letters CWS, which we deem to carry the same connotation in each of the marks. We are not persuaded by applicant’s argument that the connotations of the marks are different because applicant and registrant intend for the letters CWS to stand for different things in the respective marks, i.e., registrant’s “Casual Work Styles” versus applicant’s “Clothing Without Stitching.” None of these additional words appears in the registered marks or in the mark applicant seeks to register, and they therefore are immaterial to our analysis. See, e.g., Vornado, Inc. v. Breuer elec. Mfg. Co., 390 F.2d 724, 156 USPQ 340 (CCPA 1968); Sealy, Inc. v. Simmons Co., 265 F.2d 934, 121 USPQ 456 (CCPA 1959); and ITT Canteen Corp. v. Haven Homes Inc., 174 USPQ 539 (TTAB 1972). The additional laudatory wording in applicant’s mark, ADVANCED TECHNOLOGIES, gives an extra connotation to applicant’s mark which is not present in the cited registered marks, but we find that this point of difference is not sufficient to distinguish the marks overall. In terms of overall commercial impression, we find that applicant’s mark is highly similar to each of the cited registered marks. In all of the marks, purchasers will view and use the arbitrary initialism CWS as the Ser. No. 78314665 15 dominant if not only indication of source. The words ADVANCED TECHNOLOGIES in applicant’s mark would be viewed by purchasers not as source-indicating, but merely as laudatory and descriptive of the CWS-brand goods. We find that the similarity in overall commercial impression between the marks which results from the presence of the arbitrary letters CWS in each mark far outweighs any dissimilarity between the marks which results from the presence of the words ADVANCED TECHNOLOGIES in applicant’s mark. That is, purchasers are more likely to assume, based on the shared presence of CWS in each mark, that a source connection exists, than they are likely to assume, merely because of the presence of the additional descriptive words ADVANCED TECHNOLOGIES in applicant’s mark, that no source connection exists. Viewing the marks in their entireties, we find, for the reasons discussed above, that applicant’s mark is similar to each of the cited registered marks, and that the first du Pont factor accordingly weighs in favor of a finding of likelihood of confusion. We turn next to the second du Pont factor (the similarity or dissimilarity of the goods), and to the third du Pont factor (the similarity or dissimilarity of the trade channels for the goods). It is settled that it is Ser. No. 78314665 16 not necessary that the respective goods be identical or even competitive in order to support a finding of likelihood of confusion. That is, the issue is not whether consumers would confuse the goods themselves, but rather whether they would be confused as to the source of the goods. It is sufficient that the goods be related in some manner, or that the circumstances surrounding their use be such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source or that there is an association or connection between the sources of the respective goods. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). Although applicant is correct in noting that there is no per se rule that all clothing items are related, we find in this case that applicant’s clothing items as identified in the application, i.e., “clothing, namely, outerwear jackets, anoraks, pullovers, vests, parkas, and coats; headwear; and gloves,” are similar and related to the registrant’s goods as identified in the cited Ser. No. 78314665 17 registrations, i.e., “apparel, namely blouses, shirts and pants.” The respective goods are not identical and would not be confused for each other, but, as noted above, that is not the test. We find that “shirts” and “pants” are complementary to, and would be purchased and worn together with, the outerwear items identified in applicant’s application. Applicant argues that its goods are performance-oriented items sold primarily in specialized retail channels for outdoor gear, but that limitation is not present in applicant’s identification of goods. Likewise, nothing in the identifications of goods in the cited registrations limits those goods to “business casual work attire,” as applicant argues. Moreover, the evidence of record includes a printout from the website of the outdoor gear retailer REI, submitted by applicant in response to the Trademark Examining Attorney’s request for information as to the nature of applicant’s goods. Although the evidence was not offered for its relevance to this subject, we note that the left margin of the website page consists of a menu listing the names of categories of different products offered by REI, the first of which is “clothing and outerwear.” Thus, even if we were to limit applicant’s goods in the manner suggested by applicant, the record shows that clothing Ser. No. 78314665 18 (such as shirts and pants) is sold together with and alongside outerwear items such as applicant’s by outdoor retailers such as REI.8 Thus, we find that the second and third du Pont factors, like the first du Pont factor, weigh in favor of a finding of likelihood of confusion. Taking into account all of the relevant du Pont factors, we conclude that a likelihood of confusion exists and that registration of applicant’s mark in Class 25 is barred by Trademark Act Section 2(d). To the extent that any doubts might exist as to the correctness of this conclusion, we resolve such doubts against applicant. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc., supra. Decision: The Section 2(d) refusal to register as to the Class 25 goods is affirmed. The refusal to register 8 The commercial relationship between outerwear and the goods identified in the cited registrations is further evidenced by another piece of evidence submitted by applicant, i.e., page 10 of the attachment to applicant’s response of September 7, 2004, which shows that registrant has expanded its use of the CWS mark to items of outerwear such as sweaters. Ser. No. 78314665 19 the mark in all four classes absent submission of a disclaimer of ADVANCED TECHNOLOGIES also is affirmed. However, this decision with respect to the disclaimer requirement shall be set aside as to Classes 18, 20 and 22 if applicant, within thirty days of the mailing date of this decision, submits to the Board an appropriate disclaimer statement. Such a disclaimer should read: “No claim is made to the exclusive right to use ADVANCED TECHNOLOGIES apart from the mark as shown.” Upon timely submission of such disclaimer, the application shall proceed to publication as to the goods in Classes 18, 20 and 22 only.