Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

 

Health Fusion Brands, Inc. (applicant) has appealed the examining attorney’s final refusal to register the mark “RIPTIDE” and design for “clothing, namely, shirts,” in International Class 25 and “beverages, namely, flavored and non-flavored sparkling water and spring water; caffeinated and non-caffeinated drinks, namely, soft drinks with or without fruit flavoring; fruit juices” in International Class 32.

 

Registration was refused pursuant to Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), on the basis that the mark, as applied to the goods, is likely to be confused with the mark RIPTIDE in Registration Nos. 3378004 for which the registrant describes the goods as “Men's, women's and children's apparel, namely, shorts, shirts, jackets and footwear” and the mark LA RIPTIDE and design in Registration No. 3353749 for which the registrant describes the goods as “Clothing, namely, shirts, T-shirts, polo shirts, jerseys, uniforms, shorts, boxer shorts, tops, crop tops, tank tops, halter tops, sweat shirts, sweat pants, warm-up suits, track suits, fleece vests, pullovers, jackets, caps, hats, visors, headbands, headwear, gloves, mittens, rainwear, footwear, and sneakers.”  The refusal in the instant case is solely limited to the goods listed in International Class 25. 

 

ARGUMENT

WHETHER THE APPLICANT’S MARK, RIPTIDE AND DESIGN, IS LIKELY TO CAUSE CONFUSION WITH THE MARKS IN REGISTRATION NOS. 3353749 AND 3378004 UNDER TRADEMARK ACT SECTION 2(d), 15 U.S.C. SECTION 1052(d).

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

The applicant has applied to register the mark, RIPTIDE in stylized form with the letter “T” represented by the design of a surfer carrying a surfboard for goods identified as “clothing, namely, shirts,” in International Class 25 and “beverages, namely, flavored and non-flavored sparkling water and spring water; caffeinated and non-caffeinated drinks, namely, soft drinks with or without fruit flavoring; fruit juices,” in International Class 32.

 

Registration No. 3378004 is RIPTIDE for “Men's, women's and children's apparel, namely, shorts, shirts, jackets and footwear.”  Registration No. 3353749, for the mark LA RIPTIDE and shark and surfboard design (LA is disclaimed) for “Clothing, namely, shirts, T-shirts, polo shirts, jerseys, uniforms, shorts, boxer shorts, tops, crop tops, tank tops, halter tops, sweat shirts, sweat pants, warm-up suits, track suits, fleece vests, pullovers, jackets, caps, hats, visors, headbands, headwear, gloves, mittens, rainwear, footwear, and sneakers.” 

 

SIMILARITY OF THE MARKS OF THE PARTIES

 

With respect to the similarity of the marks, the applicant contends that in light of the differences in the marks, confusion is not likely.  Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

 

When comparing marks, the test is not whether the marks can be distinguished in 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 applicant’s and registrant’s marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); TMEP §1207.01(b).  The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks.  L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

In the instant case, the marks are, at the very least, highly similar in sound, connotation and commercial impression.  The dominant wording in each of the marks is identical: RIPTIDE.  Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).

 

            Moreover, Registration No. 3378004 is RIPTIDE is in standard characters.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).  Accordingly, although the applicant’s mark features a design element, it will not obviate a likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  

 

Similarly, with respect to the applicant’s mark and the mark in Registration No. 3353749, although the two marks feature different designs, this factor will not overcome the likelihood of confusion refusal.  For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)).  Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  As noted above, the marks of the parties in the instant case feature the dominant, nearly identical wording, RIPTIDE. 

 

Additionally, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  In the instant case, disclaimed matter (LA in Registration No. 3353749) is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).

 

            Accordingly, the marks of the parties are similar such that there would be a likelihood of confusion under Section 2(d) of the Trademark Act. 

 

SIMILARITY OF THE GOODS OF THE PARTIES

 

With respect to the similarity of the goods of the parties, the applicant contends that in light of the differences in the marks as well as the long term concurrent use of the marks confusion is not likely inasmuch as consumers will view the applicant’s mark on clothing as the secondary source of sponsorship of its’ primary goods, namely “beverages, namely, flavored and non-flavored sparkling water and spring water; caffeinated and non-caffeinated drinks, namely, soft drinks with or without fruit flavoring; fruit juices.”  The applicant further noted that it has used the RIPTIDE mark in connection with beverages and printed on t-shirts at least as early as March, 2003 and has used the instant mark since 2009.  Brief at 4.  Accordingly, the applicant contends that when consumers view its’ mark, they will associate the clothing with applicant’s beverages. 

 

As indicated above, the applicant’s goods are identified as “clothing, namely, shirts,” in International Class 25 and “beverages, namely, flavored and non-flavored sparkling water and spring water; caffeinated and non-caffeinated drinks, namely, soft drinks with or without fruit flavoring; fruit juices,” in International Class 32.  The goods of Registration No. 3378004 are identified as “Men's, women's and children's apparel, namely, shorts, shirts, jackets and footwear.”  The goods of Registration No. 3353749 are identified as “Clothing, namely, shirts, T-shirts, polo shirts, jerseys, uniforms, shorts, boxer shorts, tops, crop tops, tank tops, halter tops, sweat shirts, sweat pants, warm-up suits, track suits, fleece vests, pullovers, jackets, caps, hats, visors, headbands, headwear, gloves, mittens, rainwear, footwear, and sneakers.”  The goods of the parties all feature the identical goods: SHIRTS. 

 

The goods of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).

 

In the instant case, neither the application nor the registrations contains any limitations regarding trade channels for the goods and therefore it is assumed that the relevant goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).

 

The applicant’s contention that based on its prior registrations in connection with beverages as well as its long term concurrent use of the marks diminishes any likelihood of confusion in the marketplace, is unpersuasive.  The instant refusal is based on the similarity of the goods in International Class 25, specifically, “clothing, namely, shirts.”  The goods of the parties in the instant case feature clothing items including the identical goods, shirts.  Decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods.  Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).

 

Moreover, the applicant’s contention that based on its prior registrations in connection with beverages as well as its long term use with respect to beverages, diminishes any likelihood of confusion in the marketplace, is without merit with respect to the similarity of the goods of the parties.  The instant refusal under Section 2(d) of the Trademark Act, relates to clothing.  The fact that the applicant owns registrations for completely unrelated goods than those cited therein, is irrelevant. 

 

Finally, the fact that the marks of the parties have had concurrent use without any evidence of confusion is irrelevant.  The test under Trademark Act Section 2(d) is whether there is a likelihood of confusion.  It is not necessary to show actual confusion to establish a likelihood of confusion.  Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1571, 218 USPQ 390, 396 (Fed. Cir. 1983)); TMEP §1207.01(d)(ii).  The Trademark Trial and Appeal Board stated as follows:

 

[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).

 

In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).

 

CONCLUSION

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

            Based on the relevant and well-settled case law, applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 287637 and 3481165 as to be likely to cause confusion, to cause mistakes, or to deceive.  The examining attorney, therefore, respectfully requests that the Board affirm the refusal to register the mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d) with respect to the goods International Class 25 only.

 

 

 

 

 

 

                                                                        Respectfully submitted,

 

 

/Howard Smiga/

Examining Attorney

Law Office 102

571-272-9220

Howard.Smiga@uspto.gov   

 

 

Mitchell Front

Managing Attorney

Law Office 102

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO EXAMINING ATTORNEY’S APPEAL BRIEF

HAS ISSUED ON 8/13/2013 FOR U.S. APPLICATION SERIAL NO. 85491698

 

Please follow the instructions below:

 

(1)  TO READ THE APPEAL BRIEF:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Examining Attorney’s Appeal Brief may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  FILING A REPLY BRIEF:  You may file a reply brief within twenty (20) days of 8/13/2013, the date from which the Examining Attorney’s Appeal Brief issued. 

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail a reply brief because this mailbox is not monitored.  Instead, the Trademark Trial and Appeal Board recommends that you file a reply brief online using the Electronic System for Trademark Trials and Appeals (ESTTA) located at http://estta.uspto.gov.

 

(3)  QUESTIONS:  For technical assistance in accessing or viewing the appeal brief in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.