Offc Action Outgoing

26United States Patent and Trademark Office (USPTO)

 

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

Kyle Smith, hereinafter “applicant,” has appealed the examining attorney’s refusal to register the trademark ALABASTER.  The examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), on the ground that applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 5205799 as to be likely to cause confusion, to cause mistake, or to deceive.

I.                   Factual Background

On October 11, 2018, applicant filed a Section 1(a) application seeking registration on the Principal Register of the mark ALABASTER in standard characters for “Entertainment services in the nature of presenting live musical performances” in International Class 041.

In an Office action dated January 22, 2019, the examining attorney refused registration of the mark under Section 2(d) on the ground that the mark, when used in connection with the identified goods, so resembles the mark in U.S. Registration No. 5205799 as to be likely to cause confusion, to cause mistake, or to deceive.  The examining attorney also refused registration under Sections 1 and 45.

In a response filed on July 22, 2019, applicant submitted a response with arguments against the Section 2(d) refusal.  On July 26, 2019, the examining attorney issued a final Office action making the refusals under Section 2(d) and Sections 1 and 45 final.  Applicant filed a Notice of Appeal and a Request for Reconsideration on January 27, 2020 which contained an amended identification of services and additional arguments against the Section 2(d) refusal.  The proposed identification of services amended “Entertainment services in the nature of presenting live musical performances” to “Entertainment services in the nature of live musical performances.”

The examining attorney denied applicant’s Request for Reconsideration on February 19, 2020.  Within the denial of the Request for Reconsideration, the examining attorney accepted and entered applicant’s amended identification of services and withdrew the Sections 1 and 45 refusal, however, the final Section 2(d) refusal was maintained.  Applicant filed its Appeal Brief on March 26, 2020 and jurisdiction was restored to the examining attorney on March 27, 2020.

II.                Issue

The sole issue on appeal is whether applicant’s proposed mark, ALABASTER, for, as amended, “Entertainment services in the nature of live musical performances” in International Class 041 so resembles the mark ALABASTER GRACE in U.S. Registration No. 5205799, for “Pre-recorded digital media and CDs featuring music; Audio and video recordings featuring music and artistic performances; Digital music downloadable from the Internet” in International Class 009 and “Entertainment services in the nature of live musical performances; non-downloadable digital music provided from the internet” in International Class 041, as to be likely to cause confusion, to cause mistake, or to deceive under Trademark Act Section 2(d).

III.             Argument

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a 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).  Determining likelihood of confusion is made 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).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  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)); see TMEP §1207.01.

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.

Applicant seeks registration of ALABASTER, in standard characters, for “Entertainment services in the nature of live musical performances” in International Class 041.

Registrant’s mark, U.S. Registration No. 5205799, is ALABASTER GRACE, in standard characters, for “Pre-recorded digital media and CDs featuring music; Audio and video recordings featuring music and artistic performances; Digital music downloadable from the Internet” in International Class 009 and “Entertainment services in the nature of live musical performances; non-downloadable digital music provided from the internet” in International Class 041.

A. The Marks Are Confusingly Similar

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

In this case, applicant’s mark is ALABASTER and registrant’s mark is ALABASTER GRACE.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).

Furthermore, applicant’s mark appears first within registrant’s mark.  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).  Therefore, the dominant element of registrant’s mark is ALABASTER, which is identical to applicant’s mark.

Applicant argues that the additional term in registrant’s mark sufficiently distinguishes the marks in sound, appearance, and meaning.  Regarding the sound and appearance of the marks, while an additional word creates a visual difference and extra syllables, these differences are outweighed by the fact that the marks begin with identical terms and that applicant’s mark contains no additional aural or visual elements to distinguish the additional term in registrant’s mark.

Regarding the impressions of the marks, applicant argues the word GRACE significantly differentiates the commercial impressions of the marks.  Applicant recites several different definitions showing that GRACE carries a religious connotation, and that when used in combination with ALABASTER, the resulting phrase is a reference to the ALABASTER vessel used by Mary of Bethany to bring perfume to Jesus Christ.

The examining attorney provided evidence from The American Heritage Dictionary showing the word GRACE has several definitions.[1]  While some of these definitions carry religious connotations, many more do not, such as “Seemingly effortless beauty or charm of movement, form, or proportion,” “A characteristic or quality pleasing for its charm or refinement,” and “A sense of fitness or propriety.”  Given that registrant’s identification of services is not limited to Christian or religious music, there is no reason to conclude based on the identification of services in the registration that a consumer would understand the phrase ALABASTER GRACE to refer to a particular vessel made of ALABASTER referenced in the Bible.

However, even if consumers did make this connection, the impression created is that of a vessel made of ALABASTER.  Therefore, this impression, or any other created by the wording ALABASTER GRACE, is reliant on the identical term ALABASTER because the word GRACE does not change the meaning of this identical term, and therefore the marks create similar impressions.  Finally, because applicant’s mark contains no additional wording, there is no distinguishing matter that would change the impression of this common wording, and consumers would see applicant’s mark as a reference to the same ALABASTER matter that registrant’s mark references.

Therefore, the marks are confusingly similar in nature because they each contain the identical word ALABASTER, this common wording is the first word in registrant’s mark, the additional word in registrant’s mark does not change the impression of this common wording, and applicant’s mark contains no unique matter to distinguish the marks.

B. The Services Are Identical

Under a Section 2(d) analysis, the services of the parties are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).

In this case, the services in the application are identical to services contained within the registration.  Specifically, both the application and registration contain identical entries for “Entertainment services in the nature of live musical performances” in International Class 041.  Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these services.  See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s services are related for purposes of finding a likelihood of confusion.

Applicant argues that its services are provided through different channels of trade than registrant’s services.  However, there is no limitation on the trade channels in the listed identifications, which as stated above, is controlling.  Similarly, applicant’s arguments regarding the different genres of music that each party performs are unpersuasive, as there is no limitation of genres in the identifications.  Therefore, these arguments and the evidence supporting them are irrelevant.

Applicant cites Sunenblick v. Harrell 895 F. Supp. 616, 629, 38 USPQ2d (BNA) 1716, 1727 (S.D.N.Y. 1995), aff'd without op., 101 F.3d 684 (2d Cir. 1996), cert. denied, 519 U.S. 964 (1996), in which the court found no likelihood of confusion between musical recordings based on the different genre of music of the recordings.  The examining attorney notes that Sunenblick was an inter partes case based on unregistered marks, which required extensive evidence as to the actual nature of the goods of the parties in the marketplace.  The present case is an ex parte proceeding where the relatedness of the services is determined only based on the services listed in the application and registration, which are identical.  Applicant states that even despite this case being an inter partes proceeding, it still demonstrates the relevance of the intended consumer bases.  The examining attorney notes that regardless of the relevance of the intended consumer bases, the lack of limitation to either identification of services means that the intended consumer bases, for the purposes of this appeal, are identical.

Next, applicant argues that the consumers of the relevant services exercise great care, and are therefore less susceptible to confusion.  The examining attorney first notes that this assertion is unsupported by any evidence.  Applicant quotes Sunenblick which found “buyers of musical recordings are relatively sophisticated consumers …,” however, the evidence that led the court in that case to such a finding has not been presented here.  Furthermore, the goods referred to in that finding are different than the services that are at issue in this case.  While both may relate to music, the relevant services are distinct from musical recordings in both their nature and the conditions through which consumers interact with them.  A consumer may see a live musical performance in any number of ways, such as at a free concert in a park or at a bar, whether the consumer sought out the performance or not.  The decision with whether and how to interact with these services is entirely distinct from the decision as to whether to purchase a musical recording.

Finally, even if the consumers were considered sophisticated, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).  As such, this argument is unpersuasive.

C. Other du Pont Factors

Applicant argues that registration should be allowed because the extent of potential confusion is de minimis and because the marks have coexisted in the marketplace since 2015.  Regarding the extent of the potential confusion, due to the similarity of the marks and the fact that the services are legally identical and are presumed to travel through the same trade channels, the potential for confusion cannot be deemed to be de minimis.

Regarding the absence of actual confusion, it is first noted that “‘a showing of actual confusion is not necessary to establish a likelihood of confusion.’”  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  Furthermore, applicant’s statement that no actual confusion has occurred is of little probative value in an ex parte proceeding.  See In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of appellant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion) cited in In re Majestic Distilling, 65 USPQ at 1205 (“The lack of evidence of actual confusion carries little weight, … especially in an ex parte context.”).

IV.             Conclusion

For the foregoing reasons, the refusal to register on the basis of Trademark Act Section 2(d), for the reason that there is a likelihood of confusion between the proposed mark and the registered mark, should be affirmed.

 

 

 

 

                                                                       Respectfully submitted,

 

 

John Sullivan

/John Sullivan/

Examining Attorney

Law Office 114

(571) 272-9519

john.sullivan@uspto.gov 

             

 

 

Laurie Kaufman

Managing Attorney

Law Office 114

571-272-8913

laurie.kaufman@uspto.gov