IN RE CARLOS EMILIO VALENCIA-SUáREZ, 77565198 (TTAB 3-24-2011)
In re Carlos Emilio Valencia-Suárez
Serial No. 77565198 Filed: September 8, 2008United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: March 24, 2011Page 1
[EDITOR'S NOTE: This case is unpublished as indicated by the issuing court.]
THIS DECISION IS NOT A PRECEDENT OF THE T.T.A.B.
Arturo Perez-Guerrero, Law Offices of Arturo Perez-Guerrero for applicant.
Renee D. McCray, Trademark Examining Attorney, Law Office 111, Craig Taylor, Managing Attorney.
Before Bucher, Mermelstein, and Wolfson, Administrative Trademark Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
Applicant seeks registration of the mark
for "Belts; Blouses; Capris; Jackets; Jeans; Panties; Pants; Shirts; Shorts; Skirts; Socks; Stockings; Sweat shirts; T-shirts" in International Class 25.[fn1]
The examining attorney has refused registration, having determined that registration of applicant's mark would leadPage 2
to a likelihood of confusion in view of Registration No. 3370268[fn2] for LA COCOA (in standard characters) as used on
clothing, namely, coats, leather coats, pants, trousers, jeans, overalls, jackets, evening jackets, tuxedos, blousons, fleece pullovers, waistcoats, business shirts, vests, blazers, suits, dresses, gowns, knit cardigans, knit pants, sweaters, cardigan sweaters, knit shirts, pullovers, blouses, sports shirts, sport jerseys, polo shirts, golf trousers, golf shoes, t-shirts, jogging suits, tank tops, knit skirts, skirts, swimsuits, pajamas, bathrobes, dressing gowns, cloaks, shorts, footwear, headwear; clothing accessories, namely, neckties, gloves, boxer shorts, scarves, suspenders, cummerbunds, belts, underwear, hats, sun visors, sweat bands, socks, stockings and tights, shawls, hosiery and waterproof clothing, namely, raincoats and rain boots.
Trademark Act § 2(d); 15 U.S.C. § 1052(d). Applicant appeals from the examining attorney's final refusal.
We affirm.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. SeeIn re E.I. du Pont de Nemours Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v.Veuve Clicquot Ponsardin Maison Fondee En 1772,396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re MajesticDistilling Co., Inc., 315 F.3d 1311,Page 3
65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Rests. Inc.,105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that "[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks."Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re Azteca Rest.Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
II. Discussion
A. Similarity of the Goods; Channels of Trade and Class ofConsumers
Applicant's goods are identified as "belts; blouses; capris; jackets; jeans; panties; pants; shirts; shorts; skirts; socks; stockings; sweat shirts; [and] t-shirts." Each of applicant's goods is identical to or very closely related to one or more of the goods set out in the cited registration. Applicant does not dispute that its goods are identical in part and otherwise closely related to those in the prior registration, confining its arguments to the differences in and strength of the marks at issue.
With respect to the channels of trade and class of consumers for the identified clothing items, we start with the principle that – unless otherwise limited – goodsPage 4
recited in an application or registration are presumed to be provided in all channels of trade normal for such goods, and that they are purchased by all of the usual consumers for them.In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (citingKalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958)). The fact that the goods in this case are identical in part means that we must assume that their purchasers and channels of trade are also identical, at least in part. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) ("Given the in-part identical and in-part related nature of the parties' goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade"); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) ("Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers"). Again, applicant makes no argument that its channels of trade or classes of consumers differ from those of the cited registrant.
We conclude that the subject application and the cited registration include identical, and otherwise closely related, goods and that those goods are sold in identicalPage 5
channels of trade to the same classes of consumers. Thesedu Pont factors strongly favor the finding of a likelihood of confusion.
B. The Similarity or Dissimilarity of the Marks in TheirEntireties
In a likelihood of confusion analysis, we compare the marks for similarities and dissimilarities in appearance, sound, connotation and commercial impression. Palm Bay, 73 USPQ2d at 1692. "[T]he test 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 so that confusion as to the source of the goods offered under the respective marks is likely to result." H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008). In comparing the marks, we keep in mind that "[w]hen marks would appear on virtually identical goods. . ., as is the case here, the degree of similarity necessary to support a conclusion of likely confusion declines." In re Max Capital Group Ltd.,93 USPQ2d 1243, 1248 (TTAB 2010) (citing Century 21Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)). Moreover, while we must consider the marks in their entireties, it is entirely appropriate to accord greaterPage 6
importance to the more distinctive elements in the marks. "[I]n articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable."In re Nat'l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
As noted above, applicant's mark is COCOA JEANS. The applied-for mark presents this wording in white block type against a rectangular red carrier with a minimal stylization or drawing element, namely a solid white circle inside the first letter "o" in COCOA. While we do not ignore these design elements, we find that they are minimal, and do not significantly add to the overall impression of applicant's mark. In so finding, we note that neither applicant's rectangular carrier nor its filled-in letter "o" is highly distinctive. Moreover, the cited mark is registered in standard characters, and thus is "not limited to any particular rendition of the mark. . . ." Cunningham v. Laser GolfCorp., 55 USPQ2d at 1847. In evaluating likelihood of confusion based on a typed or standard character registration, one must considerPage 7
"all reasonable manners" in which the mark could be depicted, including a manner similar to that in which applicant's mark is displayed. INB Nat'l Bank v. MetrohostInc., 22 USPQ2d 1585, 1588 (TTAB 1992).
As is obvious, LA COCOA and COCOA JEANS are similar in that they both comprise the word "COCOA," which on this record appears to be entirely arbitrary, with no descriptive or suggestive meaning relevant to the identified goods. Further, it is clear that the term "JEANS," which applicant has disclaimed, is descriptive or generic of both applicant's goods and those of the registrant (both of which include "jeans").
While descriptive, generic, or otherwise disclaimed matter is not removed from the mark, and we must consider the marks in their entireties, the "descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion." Cunningham v. Laser Golf Corp.,222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting Inre Nat'l Data Corp., 224 USPQ at 752). Accordingly, the term "JEANS" in applicant's mark does little or nothing to distinguish it from the mark in the cited registration. And while the term "LA" in the cited registration does not appear to have any relevant meaning, the word "COCOA" visually and aurally dominatesPage 8
the registered mark.
We thus find that COCOA is clearly the dominant feature of both marks, and that the marks are substantially similar overall in appearance, sound, and meaning, and commercial impression a factor which favors a finding of likelihood of confusion.
C. Applicant's Arguments
Applicant raises two arguments in favor of registrability. First, that it is the owner of a prior registration for the mark CR COCOA REPUBLIC JEANS for the same goods as in the subject registration,[fn3] and second, that third parties have registered the marks COCACHIC and COCOANUT WEAVE, both for International Class 25 goods (although the goods were not listed). In its appeal brief, applicant further cited the marks COCONA and C COCONA, also registered for unspecified Class 25 goods.[fn4] App. Br. at 4-5. Applicant's arguments are unavailing.
As for applicant's first argument, applicant's prior registration does not establish a right to register any other mark containing the word "COCOA." Applicant's priorPage 9
registration is for a significantly different mark, with a different connotation, and whether that mark would or would not lead to a likelihood of confusion with the cited registrant's mark is clearly not the issue in this appeal.
Likewise, applicant's third-party registrations (even if we assume them to cover similar goods) are all for marks different from those at issue here, and significantly, none is as similar to the prior registrant's mark as is the mark in the subject application. In any event, we simply are not bound by the decisions of examining attorneys. The Board must make its own findings of fact, and that duty may not be delegated by adopting the conclusions reached by an examining attorney in another case. In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986). "Even if all of the third-party registrations should have been refused registration . . ., such errors do not bind the USPTO to improperly register Applicant's marks." In re Shinnecock Smoke Shop, 571 F.2d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (citing In re BoulevardEntm't, 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
Finally, to the extent that applicant relies on the prior registrations to prove that COCOA is "weak," we agree with the examining attorney that third-party registrationsPage 10
cannot be given any weight in determining the strength of a registration. Olde Tyme Foods Inc. v. Roundy's Inc.,961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). While the number and nature of similar marks in use on similar goods may be considered on the ultimate question of likelihood of confusion, du Pont, 177 USPQ at 567, third-party registrations are not evidence that such marks are in use or that consumers are familiar with them. AMF Inc. v. Am.Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269-70 (CCPA 1973).
We conclude that neither applicant's prior registration nor the third-party registrations referred to by applicant provide any rationale for registering a mark which would otherwise be held to present a likelihood of confusion.
III. Conclusion
We have carefully considered the entire record and the arguments of applicant and the examining attorney. We conclude, in light of the identical goods at issue, the similar marks, and the identical customers and channels of trade, that use of applicant's mark on or in connection with the identified goods is likely to cause confusion with the mark in the cited prior registration.Page 11
Decision: The refusal to register under Trademark Act § 2(d) is accordingly affirmed.
[fn1] Based on the allegation of a bona fide intent to use the mark in commerce. Applicant disclaimed the exclusive right to use "JEANS" apart from the mark as shown. "The color(s) red and white is/are claimed as a feature of the mark."
[fn2] Issued January 15, 2008, based on use of the mark in commerce.
[fn3] Registration No. 3416640, registered April 29, 2008.
[fn4] None of these registrations was properly submitted, having merely been listed in applicant's responses to Office Actions and in its brief on appeal. Nonetheless, we have considered the information which applicant has submitted because the examining attorney neither objected nor advised applicant that the registrations were not properly of record.