IN RE ALLENE ROSE GALLAGHER, 78483003 (TTAB 3-9-2007)
Serial No. 78483003United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: March 9, 2007Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Edward W. Goebel, Jr. and Jon L. Woodard of MacDonald, Illig, Jones Britton LLP for Allene Rose Gallagher.
Andrea Koyner Nadelman, Trademark Examining Attorney, Law Office 110 (Chris A. F. Pedersen, Managing Attorney).
Before Seeherman, Bucher and Bergsman, Administrative Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Allene Rose Gallagher has appealed from the final refusal of the Trademark Examining Attorney to register AG and design, as shown below, for “doll house furnishings, namely cakes, pies, desserts and other food items.”[fn1]Page 2
Registration has been refused pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. ? 1052(d), on the ground that applicant’s mark so resembles the mark AG MINI*S and design, as shown below, with MINI’S disclaimed, previously registered for the following goods, that, as used on applicant’s identified goods, it is likely to cause confusion or mistake or to deceive:
toys, namely miniature furniture, lamps, chairs, tables, wardrobes, carpets, wallpaper, beds, bedding, pillows, curtains, books, toy animals, rooms and room accessories, and other collectible miniature toy figures; and miniature furniture, accessories, and play environments, namely display boxes and drawers, sold with collectible miniature toy figures, all for children.[fn2]Page 3
The appeal has been fully briefed.
Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We have, in our opinion, limited our discussion to those factors that applicant and the Examining Attorney have deemed relevant.
In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re DixiePage 4
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We turn first to a consideration of the goods. Applicant has attempted to distinguish her goods from the registrant’s by amending the original identification of “doll house furnishings” to items of doll house furnishings ? “cakes, pies, desserts and other food items” ? that are not specifically identified in the cited registration. The fact that the specific miniatures are not the same, however, is not sufficient to avoid the likelihood of confusion. It is well established that it is not necessary that the goods of the applicant and registrant be similar or competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer. See In re International Telephone Telegraph Corp., 197 USPQ 910 (TTAB 1978).Page 5
Despite limiting her goods to furnishings that consist of food items, applicant’s goods remain virtually the same as the registrant’s in that both are miniatures that can be used in doll houses. The fact that consumers can tell the difference between food items that are used in doll houses and miniature furniture, lamps, chairs, etc., does not avoid confusion; the question is not whether consumers are likely to confuse the goods, but whether they are likely to confuse the source of the goods. Applicant’s identified miniature food items are complementary to the miniature furniture identified in the cited registration. For example, the miniature food items could be placed on a miniature dining room table, or be used in a kitchen furnished with the registrant’s miniature furniture. Because the cited registration covers a wide variety of miniature items, including furniture, carpets, wallpaper, bedding, and room accessories, consumers are likely to believe that miniatures of food items that are sold under a confusingly similar mark also emanate from the same source.
Applicant has asserted that the registrant’s goods are intended to be toys for children, while her goods are intended for serious collectors of dollhouse furnishings.[fn3]Page 6
However, the identification of goods in her application does not limit the customers of her goods to “serious collectors.” Because there are no restrictions in the identification, we must consider the goods to be sold to and used by all classes of consumers who would use “doll house furnishings, namely cakes, pies, desserts and other food items.” Children are certainly among the classes of consumers for such goods.
The du Pont factor of the similarity of the goods favors a finding of likelihood of confusion.
With respect to channels of trade, applicant states that her goods are sold directly to customers and through her Internet website. She further asserts that, as currently marketed, the registrant’s goods are sold only through on-line auction houses by end purchasers of the registrant’s goods who are reselling those goods as collectors’ items. Applicant bases the latter assertion onPage 7
statements made in a newsletter written by Kim Walter that she discovered through a search of the Internet. The article contains the statement, “In 2003, Pleasant Company discontinued the line and there are no further plans for AG Minis. This has created a market for the line with miniatures collectors on e-Bay and other online auction houses.” Applicant also submitted a declaration in which she states that she found that miniatures under the trademark AG MINIS and design are being sold on eBay.
Applicant has made it clear that she is not claiming that the registrant has abandoned its mark. Such a collateral attack is not, of course, permissible. See In re Dixie Restaurants Inc., supra, 41 USPQ2d at 1534 (“In fact, Cosmetically Yours
[Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (CCPA 1970] held that `it is not open to an applicant to prove abandonment of [a] registered mark’ in anex parte registration proceeding; thus, the `appellant’s argument . . . that [a registrant] no longer uses the registered mark . . . must be disregarded'”). Instead, applicant claims that this evidence shows the current and likely-to-continue trade channels of the goods bearing the cited mark. The difficulty with applicant’s argument is that “`[l]ikelihood of confusion must be determined based on an analysis of thePage 8
mark as applied to the . . . [goods and] services recited in applicant’s application vis-a-vis the . . . [goods and] services recited in [a] . . . registration, rather than what the evidence shows the . . . [goods and] services to be.'” In re Dixie Restaurants Inc., supra, 41 USPQ2d at 1534, quoting Canadian Imperial Bank v. Wells Fargo Bank, N.A.,811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See also In re Bercut-Vandervoort Co., 229 USPQQ 764, 765 (TTAB 1986) (evidence relating to particular goods, stores and sophistication of purchasers “must be disregarded since there is no restriction in the application or registration limiting the goods to particular channels of trade or classes of customers”).
Because the cited registration contains no limitations as to channels of trade, the goods must be presumed to be sold in all channels of trade that are appropriate for such goods. See In re Davis-Cleaver Produce Company, 197 USPQ 248 (TTAB 1977); In re Optica International, 196 USPQ 775 (TTAB 1977). Such channels would include toy stores and craft shops, the same retail outlets where doll house furnishings such as applicant’s identified goods are sold.
The du Pont factor of the channels of trade favors a finding of likelihood of confusion.Page 9
As noted above, although applicant claims that her goods are bought by serious collectors who “are likely to pay more attention to the particular type of miniature that they wish to purchase,” brief, p. 21, her identification of goods does not limit her sales to collectors. The purchasers of doll house furnishings can include children, as well as adults who buy such furnishings for children. Similarly, and as already discussed, because the identification in the cited registration does not limit the sales of the miniatures to collectors, these goods must also be treated as being sold to or for children. (As we indicated at footnote 3, the play environments identified in the registration specifically state that they are for children, and applicant and the Examining Attorney have treated the phrase “all for children” as pertaining to all the goods listed in the identification.) Children, or adults purchasing doll house furnishings such as cakes, pies and other food items, cannot be considered discriminating or sophisticated purchasers. Rather, the decision to purchase a miniature item such as a cake for a doll house might be made on impulse, and without a great deal of care or deliberation. Thus, this du Pont factor, too, favors a finding of likelihood of confusion.Page 10
We next consider the du Pont factor of the similarity of the marks, keeping in mind that when marks would appear on virtually identical goods or services, as they do here, since both applicant’s and the registrant’s goods are miniatures that can be used in doll houses, the degree of similarity necessary to support a conclusion of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
It is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood 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 a consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant accepts this principle, in that she characterizes the “AG” in the registered mark as the dominant element. Brief, p. 8. We agree. Although the mark also includes the word MINI*S, this word (which has been disclaimed) is clearly descriptive of the miniatures which are the goods identified in the registration. As a result, this word has no real source-identifying significance, and it is thePage 11
letters “A” and “G” (which have a star design element between them) that consumers would look to as the indicator of source. We recognize that the mark also contains a design element, which applicant describes as a fanciful frame. However, this frame functions more as a background or carrier, and the design cannot be articulated.
As for applicant’s mark, it consists of the letters “A” and “G”, separated by the design of a rose. Although the rose is a recognizable design element, it is likely to be viewed as simply a decorative element. In fact, consumers might view it as suggestive of the decorative icing on the cake and other dessert items that are identified in applicant’s application. Thus, while we have considered the visual impact of the rose design, the design has less trademark significance than the letters. It is the letters “A” and “G” which make the more noticeable impression because, as discussed infra, the letters can be articulated and therefore purchasers will use the letters to request the goods. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Applicant contends that “the design elements in a mark would be given less weight only if they were `nothing more than a representation of the goods, and would be recognized as such by purchasers,'” citing In re International Telephone and Telegraph Corp.,Page 12supra at 912. Brief, p. 10. This is not a correct statement of the law. In point of fact, what the Board said in that case is
In this regard it has long been held that where a mark consists of both word and design features, it is the word portion of the mark, i.e. the portion utilized in calling for the goods, which is most likely to be impressed upon the purchaser’s memory, and to serve as an indicia of origin. This would be especially so where as here the designs are nothing more than a representation of the goods, and would be recognized as such by purchasers. [citations omitted]
Further, many cases have found that words dominate over designs even when the design is arbitrary or is not a representation of the goods. See, for example, In re Comexa Ltda., 60 USPQ2d 1118 (TTAB 2001) (in applicant’s mark AMAZON and parrot design, AMAZON considered the most significant origin-indicating feature); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (applicant’s mark SEYCOS and crown design is dominated by the word SEYCOS).
We recognize that in the present case the literal elements AG are letters, rather than words. The nature of stylized letter marks is that they partake of both visual and oral indicia, and both must be weighed in the context in which they occur. In re Electrolyte Laboratories Inc.,Page 13913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990). Thus, in Georgia-Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757,760, 204 USPQ 697, 699 (CCPA 1980), the Court stated that “[i]t must be remembered that [registrant’s] trademark consists of highly stylized letters and is therefore in the gray region between pure design marks which cannot be vocalized and word marks which are clearly intended to be.” The marks in that case are shown below:
In the present appeal, neither applicant’s nor the registrant’s letter marks can be considered highly stylized. On the contrary, the letters “A” and “G” are readily recognizable, and the letters are much more in the nature of a word mark that can be spoken than a design that is only visualized. Moreover, the letters “AG” are arbitrary for miniatures. Cf. In re Electrolyte Laboratories Inc., supra, where the only common element in the marks was “K+,” the chemical symbol for the potassium ion, and the goods were a potassium supplement.
Although there are clearly some visual differences in the marks, including the different type fonts, the presencePage 14
of a rose design in applicant’s mark, and the presence of the descriptive word MINI’S and the stars and frame design in the registered mark, overall the similarities in the appearances of the marks outweigh the differences. The major similarity, of course, is that both marks contain the identical and arbitrary letters AG. However, we also note that, in both marks, these letters are visually separated by a design feature, a star in the registered mark and a rose in applicant’s. Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980). Because both marks contain the arbitrary letters A and G,[fn4] letters that can and are likely to be articulated when referring to the marks, consumers are likely to remember the letter elements of the marks. Even if they note that the marks contain different design elements, they are likely to view the marks as variations of each other, with both marks identifying miniatures emanating from a single source.
We note applicant’s argument that her mark is not pronounced as the letters AG, but as “A ROSE G.” She hasPage 15
stated that her mark is derived from her name, Allene Rose Gallagher, with the AG being the initials of her first and last name, and the rose design a pictorial of her middle name. She further states that she does not use her first name, but is known as A. ROSE. She also asserts that her trademark “is referred to and pronounced `A Rose G,” the same as the name of my business, by me and others who see it.” Declaration, ? 4. However, applicant has also said, in connection with her discussion of channels of trade, that she sells her doll house furnishings directly to her customers. We accept that these customers, with whom she has a direct relationship, may know her as “A Rose,” and therefore pronounce her trademark as “A ROSE G.” However, as previously noted, she has not restricted the channels of trade for her goods. Thus, her food miniatures may be sold in franchise toy stores or in locations in the United States where the customers would not know of her personally.[fn5] Such customers are likely to pronounce the trademark as the literal elements “AG.” Whether or not applicant intends her mark to be pronounced “A ROSE G,” there is no correct pronunciation of a trademark. Centraz Industries Inc. v.Page 16
Spartan Chemical Co., 77 USPQ2d 1698 (TTAB 2006). Therefore we must assume, for purposes of our likelihood of confusion analysis, that “AG” is one of the ways her trademark will be pronounced. This pronunciation is very similar to the pronunciation of the registrant’s mark and, in terms of likelihood of confusion, the marks must be considered to sound virtually the same. That is, because the additional descriptive word MINI’S in the cited mark would not be regarded by consumers as having source-indicating significance, the inclusion or absence of this word when the marks are spoken would not cause consumers to view the marks as different.
With respect to connotation, again, many people who merely encounter applicant’s goods on the shelves of a store, but who do not know applicant personally, would not understand her mark to have the connotation of her name. Thus, for them the mark would simply be the arbitrary letters “AG,” and the design of a rose would not have the significance of a person’s name but, as discussed earlier, would be viewed merely as a decorative element or a reference to decorative icing on the cake miniatures.
Applicant asserts that the connotations of the marks differ because of their appearances. She contends that her mark has a formal appearance and “appears to have been madePage 17
by an engraving or a stamp of the type that may be used by a business person or a business as a `mark’ or a `seal.'” As a result, she claims that her mark has a “more serious, businesslike connotation.” Brief, p. 16. On the other hand, she asserts that the cited mark has a “whimsical appearance” and “connotes something that is playful.” Id.
We are not persuaded by applicant’s arguments. The connotation of both marks is essentially the same, the arbitrary letters “AG.” Because miniatures/doll house furnishings can be purchased without a great deal of thought, ordinary purchasers are not likely to undertake the type of analysis as to connotation based on type style that applicant suggests.
Accordingly, we find that when the marks are considered in their entireties, they are similar in pronunciation and connotation, and their similarities in appearance outweigh their dissimilarities. Overall, they convey similar commercial impressions such that, when they are used in connection with virtually identical goods, i.e., miniatures that can be used as doll house furnishings, confusion is likely.
Decision: The refusal of registration is affirmed.
[fn1] Application Serial No. 78483003, filed September 14, 2004, and asserting first use and first use in commerce as of January 1, 2002. Applicant has chosen to refer to her mark, variously, as “A (Rose) G” (response filed May 8, 2006) and “A (drawing of a rose) G.” We will refer to the mark by the USPTO’s designation, although we obviously have considered the actual mark in our determination of likelihood of confusion. [fn2] Registration No. 2634567, issued October 15, 2002. We note that the word MINI’S in the registered mark is in lower case, and an asterisk is used in place of an apostrophe, although the disclaimer is for “MINI’S.” Applicant has chosen to refer to the registrant’s mark as “AG mini*s (surrounded by a fanciful frame).” We will not use such an unwieldy description, but will follow our normal convention of showing the words in a mark in all capital letters, followed by “and design” for the design element. However, as should be obvious, it is the marks themselves which we consider in determining the issue of likelihood of confusion, and not the way applicant chooses to characterize the marks. [fn3] It is not clear to us that the registrant’s identified “toys, namely miniature furniture, lamps, chairs, tables, wardrobes, carpets, wallpaper, beds, bedding, pillows, curtains, books, toy animals, rooms and room accessories, and other collectible miniature toy figures” are restricted to children. The phrase “all for children” appears following the identification “play environments, namely display boxes and drawers, sold with miniature furniture, accessories, and collectible miniature toy figures,” and this identification is separated by a semicolon from the first listing of “toys, namely miniature furniture”, etc. However, because the Examining Attorney has also considered the phrase “all for children” to refer to all of the items in registrant’s identification, we have discussed the registration as if it were so restricted. [fn4] Applicant acknowledges at p. 12 of her brief that the letters A and G do not “provide any link to dollhouse furnishings.” [fn5] Applicant also states that “A Rose G” is the name of her business. We point out that the mark she is seeking to register is AG and design, and she if she obtained such a registration she would not be required to use her trade name with the mark.