UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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U.S. APPLICATION SERIAL NO. 87412461
MARK: CISCO
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
TTAB INFORMATION: http://www.gov.uspto.report/trademarks/process/appeal/index.jsp |
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APPLICANT: Cisco Bros. Corp.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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Applicant:
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Cisco Bros. Corp. |
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BEFORE THE |
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Trademark:
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CISCO |
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TRADEMARK TRIAL |
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Serial No:
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87412461 |
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AND |
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Attorney:
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DYAN M HOUSE |
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APPEAL BOARD |
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Address:
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BAKER & MCKENZIE LLP 1900 NORTH PEARL STREET SUITE 1500 DALLAS , TX 75201 |
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ON APPEAL |
EXAMINING ATTORNEY’S APPEAL BRIEF
Applicant has appealed the examining attorney’s final refusal to register the proposed mark, CISCO and design, for “Retail store services featuring sustainable artisan home furniture and excluding mattresses.” Registration was refused on the Principal Register, pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), on the ground that the mark sought to be registered is likely to be confused with the mark in U.S. Registration No. 4739303, comprising the mark GOOD THINGS COME FROM SYSCO, for goods that include “mattresses.”
STATEMENT OF FACTS
On April 4, 2017, applicant filed an application based on Section 1(b) of the Trademark Act seeking to register the mark CISCO and design for “furniture; mirrors; lighting; fabrics; textiles; leathers; and retail store services.” Registration was refused, pursuant to Section 2(d) of the Trademark Act, on the ground that the applied-for mark is likely to be confused with a number of registrations, including the registration at issue on appeal – U.S. Registration No. 4739303.
On August 15, 2018, applicant filed a timely response to the Office action, presenting arguments as to the Likelihood of Confusion refusal and amending the identification to read “Retail store services featuring sustainable artisan home furniture and excluding mattresses.” On October 11, 2018, the examining attorney maintained and made final the Likelihood of Confusion refusal as to U.S. Registration No. 4739303. On April 11, 2019, applicant filed a Notice of Appeal. On June 10, 2019, applicant submitted its appeal brief. On June 11, 2019, applicant’s brief was forwarded to the examining attorney.
ISSUE
The issue on appeal is whether the proposed mark, CISCO and design, is likely to cause confusion with the registered mark, GOOD THINGS COME FROM SYSCO (U.S. Registration No. 4739303), pursuant to Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
ARGUMENTS
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
I. THE APPLIED-FOR MARK, CISCO AND DESIGN, AND THE REGISTERED MARK, GOOD THINGS COME FROM SYSCO, CONVEY HIGHLY SIMILAR COMMERCIAL IMPRESSIONS BECAUSE THEY FEATURE THE PHONETICALLY EQUIVALENT WORDING CISCO AND SYSCO AND BECAUSE THE REMAINING WORDING IN THE REGISTERED MARK POINTS TO THE BRAND SYSCO.
The applied-for mark comprises the wording CISCO wherein the center of the letter “O” features a design of a leaf. The registered mark comprises the phrase GOOD THINGS COME FROM SYSCO. The marks convey similar commercial impressions in that CISCO and SYSCO are likely to be pronounced in a highly similar, if not identical, manner. Indeed, such words appear to be phonetic equivalents, with the letters CIS and SYS being alternative spellings of the same sound - “sis.” When calling for the marks, consumers are likely to be confused because the words CISCO and SYSCO will be pronounced in the same manner.
The addition of the wording GOOD THINGS COME FROM to the registered mark does not avoid confusion because this phrase merely points to the wording SYSCO, indicating that good things come from the brand name SYSCO. Thus, this wording accentuates the wording SYSCO as the dominant term in the registered mark.
Furthermore, the addition of the design element to the applied-for mark does not avoid confusion because, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although 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. Here, consumers will focus on the word portion of the mark, which has the same pronunciation as the dominant word in the registrant’s mark. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Applicant contends that the shared letters SCO is the only “mere commonality” in the marks (Applicant’s brief, page 7). However, the shared letters in the wording CISCO and SYSCO are not the only common elements in the marks. Because CIS and SYS appear to be alternative spellings of the same sound, the wording CISCO and SYSCO are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are 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)(iv).
Applicant also contends that the marks are dissimilar because the applied-for mark is “widely recognized as referring to Applicant’s trade name, Cisco Brothers” while the registered mark is an acronym for “Systems and Services Company” (Applicant’s brief, pages 7-8). Applicant also indicates that consumers would recognize the registered mark as a slogan used by the Sysco Corporation (Applicant’s brief, page 8). However, applicant’s assertions are merely conclusory statements unsupported by evidence. Indeed, consumers who hear the mark CISCO and the phrase GOOD THINGS COME FROM SYSCO are likely to be confused as to source, as CISCO and SYSCO are phonetically equivalent. Moreover, when comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b). Here the average consumer is likely to view the mark CISCO and the phrase GOOD THINGS COME FROM SYSCO as identifying the same source, as CISCO and SYSCO are phonetic equivalents and because the phrase GOOD THINGS COME FROM points directly to the brand SYSCO.
II. THE GOODS AND SERVICES ARE RELATED BECAUSE RETAIL STORES FEATURING HOME FURNITURE, INCLUDING ARTISAN HOME FURNITURE, OFTEN FEATURE MATTRESSES AND BECAUSE MATTRESSES ARE A TYPE OF FURNITURE.
Applicant seeks to register its mark for “Retail store services featuring sustainable artisan home furniture and excluding mattresses” while the registrant’s goods include “mattresses.” The goods and services are related in that retail furniture stores often sell mattresses. Of note is the evidence featured in the final Office action dated October 11, 2018, featuring retail stores that sell both furniture, including artisan home furniture, as well as mattresses. Specifically:
1. Mattress Liquidators (TSDR, page 2 of the Office action) – retail store featuring artisan home furniture and mattresses
2. Bob’s Discount Furniture (TSDR, page 14 of the Office action) – retail store featuring artisan home furniture and mattresses
3. America’s Mattress (TSDR, page 32 of the Office action) – retail store featuring artisan home furniture and mattresses
4. Butler Furniture (TSDR, page 38 of the Office action) – retail store featuring furniture and mattresses
5. C & O Furniture and Mattress (TSDR, page 40 of the Office action) – retail store featuring artisan home furniture and mattresses
6. TY Fine Furniture (TSDR, page 42 of the Office action) – retail store featuring furniture and mattresses
7. Sam’s Furniture (TSDR, page 45 of the Office action) – retail store featuring furniture and mattresses
8. Kloss Furniture (TSDR, page 56 of the Office action) – retail store featuring furniture and mattresses
9. Hardwood Artisans (TSDR, page 63 of the Office action) – retail store featuring furniture and mattresses
Moreover, as the X-Search evidence attached in the final Office action dated October 11,
2018 also shows, mattresses are a type of furniture. This is evidenced by the identifications of goods in the registrations, which feature the wording “furniture, namely” and include “mattresses” among the list of furniture. For example:
1. U.S. Registration No. 2091517 (TSDR, page 68 of the Office action) – features “bedroom furniture, namely, mattresses and box springs”
2. U.S. Registration No. 2266258 (TSDR, page 70 of the Office action) – features “adult furniture, namely, mattresses, futons, sofa beds, chairs, tables, buffets, hutches, gliders and beds”
3. U.S. Registration No. 3056045 (TSDR, page 72 of the Office action) – features “Furniture, namely, mattresses, throw pillows”
4. U.S. Registration No. 3770097 (TSDR, page 75 of the Office action) – features “Furniture, namely, mattresses”
Applicant contends that confusion is unlikely because mattresses and sustainable artisan
Applicant also contends that confusion is unlikely because mattresses and artisan home furniture are sold and marketed to different purchasers (Applicant’s brief, page 5). However, this statement is merely conclusory and is unsupported by evidence. Moreover, contrary to applicant’s assertion and, as shown by the evidence discussed above, artisan home furniture and mattresses are often sold together in retail furniture and mattress stores and thus, are likely to be encountered by the same class of potential consumers.
Applicant indicates that the examining attorney has not provided evidence that mattresses are often considered furniture. (Applicant’s brief, page 5). However, the registrations referenced above proffer such evidence. Such registrations feature identifications wherein the wording “furniture, namely,” is followed by a list of goods which include “mattresses.” If mattresses are listed as a more specific type of furniture, then mattresses are furniture.
In its brief, applicant attempts to discredit two of the websites discussed above by arguing that that America’s Mattress does not allow users to shop online and that a search for “mattresses” in Butler Furniture yields no results (Applicant’s brief, pages 5-6). With respect to America’s Mattress, it must be noted that this website features links such as “Shop All Artisan Home Furniture” (page 33 of the Office action dated October 11, 2018), suggesting that consumers may, indeed, shop online. Assuming, arguendo, that consumers are unable to shop online, this is not dispositive in showing that the goods and services of the parties are related, as the website refers to a retail store that sells both artisan home furniture and mattresses.
With respect to Butler Furniture, applicant provides no evidence to indicate that this retail store does not sell mattresses. It must be noted that applicant may not provide such evidence at this time, as the record in an application must be complete prior to the filing of an appeal. 37 C.F.R. §2.142(d); TBMP §§1203.02(e), 1207.01; TMEP §710.01(c). Therefore, the examining attorney requests that the Board not consider this rebuttal evidence as part of the record. Moreover, contrary to applicant’s assertion, Butler Furniture also sells mattresses, as evidenced by the website itself which features mattresses under “shop by category.” (page 39 of the Office action dated October 11, 2018).
III. CONCLUSION
Because the marks convey similar commercial impressions, because the marks contain terms that have identical pronunciations and because the goods and services of the parties are related, CISCO and design, for “Retail store services featuring sustainable artisan home furniture and excluding mattresses” is likely to be confused with GOOD THINGS COME FROM SYSCO, for goods that include “mattresses.”
For the foregoing reasons, it is respectfully requested that the refusal to register the applied-for mark, CISCO and design, under Section 2(d) of the Trademark Act, be affirmed.
Respectfully submitted,
/Melissa Vallillo/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 105
(571) 272-5891
melissa.vallillo@uspto.gov
Managing Attorney
Law Office 105