IN RE RADOSLAV M. DIMITRIC, 78853378 (TTAB 2-7-2011)
Serial No. 78853378United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: February 7, 2011Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Radoslav M. Dimitric, pro se.
Debra Lee, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney).
Before Seeherman, Bucher and Holtzman, Administrative Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Radoslav M. Dimitric, a sole proprietorship organized under the laws of Texas, comprising Radoslav M. Dimitric, a U.S. citizen, has appealed from the final refusal of the trademark examining attorney to register the mark HELIOS PUBLISHING COMPANY and design, as shown below, with PUBLISHING COMPANY disclaimed, for “publication of scholarly books, journals, magazines, periodicals, catalogsPage 2
on various topics, namely, science, fine arts, religion, excluding books in psychology.”[fn1]
The application includes the following color claim:
The colors gold, red, green, blue, black, white, dark orange, light orange, dark red, and purple are claimed as a feature of the mark. The mark consists of a profile of a book with covers in black at the base of the mark and the profile shaped by stylized words “PUBLISHING COMPANY” in green color and varying sizes. A gold Sun having gold rays rises above it with the word “HELIOS” radiating from its border; the letters in the wordPage 3
“HELIOS” appear in the colors dark orange, red, purple, dark red, and light orange. The rectangular frame is in blue on the top and the sides and is in black on the bottom. The entire mark appears on a white background.
and translation statement:
The foreign wording in the mark translates into English as The Sun.”
The sole ground for refusal is likelihood of confusion (Section 2(d) of the Trademark Act, 15 U.S.C. ? 1052(d)). The examining attorney asserts that applicant’s mark so resembles the mark HELIOS PRESS and design, (shown below), with PRESS disclaimed, registered for “books in the fields of psychology, self-improvement, and current affairs,” that, if used in connection with applicant’s identified services, it is likely to cause confusion or mistake or to deceive. The registration includes the statement that “the English translation of ‘HELIOS’ is ‘sun’.”[fn2]
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The appeal has been fully briefed.[fn3]
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).[fn4] In any likelihood of confusion analysis, twoPage 5
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 Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We turn first to a consideration of the marks. Both marks begin with the identical word HELIOS, followed by wording describing the nature of the applicant and registrant and their goods and services, i.e., PUBLISHING COMPANY and PRESS. The marks also have different designs. However, these differences are not sufficient to distinguish 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.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case, it is appropriate to give more weight to the arbitrary word HELIOS, a term that is thePage 6
common element of both marks. As noted, the words PUBLISHING COMPANY and PRESS are descriptive, and “[t]hat a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark.” Id. Here, while the disclaimed words PUBLISHING COMPANY and PRESS tell consumers what applicant and registrant do, it is the arbitrary word HELIOS that consumers will look to as the source-indicating portion of the marks. We also point out that PUBLISHING COMPANY and PRESS have very similar connotations: PUBLISHING means “the activities or business of a publisher, esp. of books or periodicals,” while one meaning of PRESS is “a printing or publishing
establishment” (emphasis added).[fn5] As for the design elements in the marks, each merely reinforces the word HELIOS, with applicant’s sun and rays design reiterating the connotation of HELIOS, while the design of the “H” in the cited mark references the initial letter of HELIOS.Page 7
Thus, when the marks are compared in their entireties, and despite the differences due to the descriptive words PUBLISHING COMPANY/PRESS and the design elements, overall the marks are strongly similar in appearance and pronunciation, and are virtually identical in connotation and commercial impression. See, In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (JOSE GASPAR GOLD for tequila likely to cause confusion with GASPAR’S ALE and GASPAR’S ALE LIMITED RELEASE YBOR PRIVATE STOCK for ale, the Court holding that despite differences in the marks, both convey the same commercial impression, and with non-dominant features appropriately discounted, the marks are nearly identical). To the extent that consumers note the differences in the marks, they are likely to view them as variant marks, indicating a single source if they are used in connection with related goods and services.
In reaching this conclusion, we have given no weight to the “survey” applicant conducted. Aside from the fact that it is called a survey and was made available to the public on a website called “surveymonkey.com,” it has none of the scientific safeguards that would give a survey probative value. For example, there is no indication of any attempt to obtain a representative sample of consumers,Page 8
such that one could extrapolate from the responses the views of the entire group of consumers. Instead, the survey results are merely the responses of the first 100 people to go online and answer the questions (“The survey was placed on a well-known commercial survey web-site: www.SurveyMonkey.com for any web users to participate at their will.” Response filed July 8, 2008.) Further, the first question is leading, telling the respondent that the companies using the two names are different, and it also would have the respondents make what is essentially a side-by-side comparison of the marks (or at least the wording in the marks): “If you want to purchase a product from a company “HELIOS PRESS” how likely would you confuse this name with the name of a company “HELIOS PUBLISHING COMPANY” if you read the names with ordinary care?” It is a well-settled principle of trademark law that 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). Further, the question is not whether consumers can tell the difference between the marks, but whether they are likely to believe that the marks identify a single source for the goods and services.Page 9
The du Pont factor of the similarity of the marks favors a finding of likelihood of confusion.
Applicant argues that the registrant’s mark is weak, and goes so far as to assert that it is descriptive. To the extent that applicant seeks to attack the registrability of the mark, we have given this argument no consideration. An applicant may not attack the validity of a cited registration in an ex parte proceeding. See In re Dixie Restaurants Inc., 41 USPQ2d at 1534-35, and cases cited therein. Applicant may, however, contend that the cited mark is weak, and that the cited registration is therefore entitled to a limited scope of protection. In support of this claim, applicant has submitted search summary results from the USPTO’s TESS database listing marks containing the element HELIO or HELIOS, the application serial number/registration number, and whether the application/registration is alive or dead. Submitting such a list is not the appropriate way to make an application or registration of record. See In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n. 2 (TTAB 1998). However, the examining attorney has discussed the registrations, and therefore we treat them of record.
Third-party registrations, while not proving that the marks depicted therein are in use, can be used in thePage 10
manner of dictionary definitions, in order to show that a term has been adopted because it has a significance in a particular industry. In re Max Capital Group Ltd.,93 USPQ2d 1243 (TTAB 2010). However, to show that the mark in the cited registration is weak because it has a suggestive meaning, the third-party registrations must be for goods or services related to the goods or services in the cited registration. Applicant submitted a search for “HELIOS and book” which retrieved eighteen records. Some are not even for a HELIOS mark (e.g., NESA, RAT’S ASS and THAT SUCKS), and the majority are for dead applications or registrations. There are only three live registrations for HELIOS marks: the cited registration, and two registrations owned by a single entity for HELIOS and for HELIOS and design, both for comic books.[fn6] We cannot conclude from the registration by a single third party of two HELIOS marks that HELIOS has a suggestive significance for books or printed matter, such that the cited registration should be accorded a limited scope of protection.
Applicant also submitted pages of Google search summary results which indicate that a search for the termPage 11
“Helios” retrieved 9,750,000 hits, and that a search for “Helios book” retrieved 948,000 hits. The two pages of the “Helios” search summary lists, for example, a Wikipedia entry for “Helios,” stating that in Greek mythology the sun was personified as Helios; a reference to a Helios Airways flight that crashed in 2005; and a Helios Prototype remotely piloted flying wing aircraft having something to do with NASA. The “Helios book” results include listings for hotels, where “book” apparently refers to making reservations, and has nothing to do with the goods that are the subject of the cited registration. These submissions by applicant are good examples of why the Board considers Google search summary results to have limited probative value. See TBMP ? 1208.03. See also, In re Bayer Aktiengesellschaft,488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Search engine results ? which provide little context to discern how a term is actually used on the webpage that can be accessed through the search result link ? may be insufficient to determine the nature of the use of a term or the relevance of the search results to registration considerations”); In re International Business Machines Corp., 81 USPQ2d 1677, 1679
n. 3 (TTAB 2006) (listings of search results from the Google database is of limited probative value because the excerpts are extremelyPage 12
truncated). In any event, the determination of whether a term is weak is not based on whether the term may be found in various websites, but whether the term is the subject of third-party trademark use for the same or similar goods or services. See du Pont factor six: The number and nature of similar marks in use on similar goods. Even considering the truncated nature of the Google search summaries, the only possible third-party use of HELIOS as a trademark for books or book publishing services listed in the summary is by a UK company. However, there is no information about whether this company sells books in the United States, or whether consumers in the United States would be exposed to the trademark. The same comment pertains to the evidence applicant has submitted of a German publishing company called Helios Media Publishing House, which appears to publish German newsletters and magazines, under various German names or marks (none being Helios), in Germany; and to evidence applicant submitted of two registrations of the marks FRUCTIDOR INTERNATIONAL and PAPA TE RACONTE taken from the international “Madrid Express” database, which shows the registrations are owned, respectively, by the French companies Helios International and Studio Helios. Not only is there no evidence that these companies’ names have had any meaningful exposure in the United States, butPage 13
there is no evidence that the companies are using HELIOS marks anywhere.
Accordingly, we find that applicant has not shown that the mark that is the subject of the cited registration is weak, and therefore we find that the cited registration is entitled to the normal scope of protection. We also recognize that there is no evidence that the cited mark is famous, but the duPont factor of fame is normally not considered in ex parte examination because an examining attorney does not have access to the evidence that would prove fame, e.g., sales and advertising information. In any event, while the factor of fame weighs heavily in favor of a famous mark in the likelihood of confusion analysis, certainly fame is not required for a finding of likelihood of confusion. As the Court stated in In re Majestic Distilling Co., 65 USPQ2d at 1205, “Although we have previously held that the fame of a registered mark is relevant to likelihood of confusion, DuPont,476 F.2d at 1361, 177 USPQ at 567 (factor five), we decline to establish the converse rule that likelihood of confusion is precluded by a registered mark’s not being famous.”
The factor of the fame of the registered mark is neutral, and the factors of the strength of the cited mark, in view of its arbitrary nature, and the lack of probativePage 14
evidence of third-party use weigh in favor of finding a likelihood of confusion.
This brings us to a consideration of the goods and services. Applicant’s services are identified as “publication of scholarly books, journals, magazines, periodicals, catalogs on various topics, namely, science, fine arts, religion, excluding books in psychology”; the identification of goods in the cited registration is “books in the fields of psychology, self-improvement, and current affairs.” There is no real dispute that the service of publication of books and the goods, books, are closely related. The examining attorney has submitted numerous third-party registrations that show a single mark has been registered for both books and book publishing services, e.g., Registration Nos. 2371173, 2517064, 2755893, 2922148 and 2730666. Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel Sons Co., 29 USPQ2d 1783 (TTAB 1993).
In addition, the examining attorney has submitted evidence from many third-party websites showing that companies offer both publishing services and books, and thePage 15
evidence submitted by applicant shows that it both solicits proposals for publications and publishes books and offers books for sale, all using the trade name Helios Publishing Co., while the registrant’s business is described as publishing books. Submission attached to response filed Nov. 6, 2007.
Applicant’s arguments that its services and the registrant’s goods are not related rests primarily on the differences in the types of books that each company publishes and sells. Applicant states that its publications are “scholarly,” and are published in both English and languages other than English, while the registrant “publishes self-improvement books, which do not have the ‘scholarly’ connotation, rather the entertaining one.” Brief, pp. 9-10. As a result, applicant contends that “no one could possibly confuse the distinctive kinds of books published under these two different signs.” Brief, p. 10.
“‘Likelihood of confusion must be determined based on an analysis of the mark as applied to the ? [goods or] services recited in applicant’s application vis-a-vis the ? [goods or] services recited in [a] ? registration, rather than what the evidence shows the ? services to be.'” In re Dixie Restaurants Inc., 41 USPQ2d at 1534, quoting CanadianPage 16
Imperial Bank v. Wells Fargo Bank, N.A., 811 F.2d 1490,1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). Thus, applicant cannot limit the types of books identified in the cited registration by either extrinsic evidence or its view of the scholarly value of registrant’s work. The registrant’s books at least in the fields of psychology and current affairs must be considered, as identified, to include scholarly publications. Further, even though the specific topics of applicant’s scholarly books and the registrant’s books are different (applicant’s are identified as “science, fine arts, religion, excluding books in psychology”), both applicant’s and the registrant’s identifications show that a publisher or seller of books can offer books on a variety of subjects. Further, the examining attorney has submitted website evidence showing that third parties publish, under a single mark, books on a wide variety of topics, including the topics listed in both applicant’s and the registrant’s identifications. See, for example:
Cambridge University Press, www.cambridge.org/us ? psychology (Evolutionary Psychology) and science (Digital Integrated Circuit Design);
The Johns Hopkins University Press, www.press.jhu.edu ? current events (Fixing Global Finance) and science andPage 17
fine art (Hidden Harmony: The Connected Worlds of Physics and Art);
Duke University Press, http://dukeupress.edu. ? books on the subjects Art History Criticism, Religious Studies and Psychology.
Harvard University Press, www.hup.harvard.edu ? books on a wide variety of subjects, including art, body mind spirit, science, psychology and poetry. In addition, the website features its publishing services and provides guidelines for submitting book proposals.
All of this evidence shows that books and the services of publishing books, on a variety of topics, can be offered under a single mark. Thus, consumers are likely to believe that a publisher of scholarly books in, for example, science and religion, also produces scholarly books on psychology and current affairs, if the goods and services are offered under confusingly similar marks.
The du Pont factor of the relatedness of the goods and services favors a finding of likelihood of confusion.
As for the channels of trade, again applicant relies on the specific channel of trade for its services and that it has found for registrant’s goods, contending that each party offers them only through its own particular website with its own unique address. However, as we have already discussed, we must consider the goods and services as theyPage 18
are identified in the respective registration and application, and absent any express limitations in either, we must deem the goods and services to be offered under all appropriate channels of trade for them. It is common knowledge that books, including scholarly books, are sold in various retail settings such as college bookstores, and through third parties’ websites, and therefore we cannot view the channels of trade for the registrant’s goods to be limited to sales through its own website. Publishing services, as identified in the application, may also be offered or advertised through avenues other than a publisher’s website, including by means of the publisher’s mark appearing in the books that they publish. Thus, one seeking to have a book published might well identify a publisher by the mark appearing in books that have been published by that entity. As a result, the services identified in applicant’s application and the goods identified in the cited registration would be exposed to the same classes of consumers.
Finally, applicant relies heavily on its claim that there is no evidence of instances of confusion despite eight years of contemporaneous use. The Court addressed a similar argument in In re Majestic Distilling Co., 65 USPQ2d at 1205:Page 19
With regard to the seventh DuPont factor, we agree with the Board that Majestic’s uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d 640, 642, 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). A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in an ex parte context.
After considering all the evidence and arguments of applicant and the examining attorney, including those not specifically addressed herein,[fn7] we find that applicant’s mark HELIOS PUBLISHING COMPANY and design for the identified services is likely to cause confusion with Registration No. 2889623.
We add that, to the extent there is any doubt on this issue of likelihood of confusion, such doubt must be resolved in favor of the registrant. Applicant’s argumentPage 20
that it “should be allowed to register his mark and let anyone who actually has a complaint (if any) voice that complaint during the allotted time slot,” brief, p 20, is contrary to case law. See In re Dixie Restaurants, Inc., 41 USPQ2d at 1535:
Dixie argues alternatively that the PTO should pass the mark to publication and allow the registrant to oppose the applicant’s mark, if it chooses. But it is the duty of the PTO and this court to determine whether there is a likelihood of confusion between two marks. In re Apparel, Inc., 366 F.2d 1022, 1023, 151 USPQ 353, 354 (CCPA 1966). It is also our duty “to afford rights to registrants without constantly subjecting them to the financial and other burdens of opposition proceedings.” Id.; see also In re The Clorox Co., 578 F.2d 305, 308, 198 USPQ 337, 341 (CCPA 1978); McCarthy, supra, Section 23.24[1][d] (where PTO rejects an application under section 1052(d), “it is no answer for the applicant to ask that the application be passed to publication to see whether the owner of the cited mark will oppose the registration”). Otherwise protecting their rights under the Lanham Act would be an onerous burden for registrants.
Decision: The refusal of registration is affirmed.
[fn1] Application Serial No. 78853378, filed April 4, 2006. The application was originally filed pursuant to Section 1(a) of the Trademark Act, claiming that “the mark was first used anywhere in a different form other than that sought to be registered on 09/21/1990, and in commerce on 01/02/1998.” Applicant subsequently amended the basis of the application to Section 1(b) (intent-to-use) in order to overcome the examining attorney’s requirement that applicant either amend the drawing applicant submitted on November 6, 2007 to conform to the specimens of record, or to submit substitute specimens to support the drawing. The original identification of services was “publication of books, of magazines, of journals, of newspapers, of periodicals, of catalogs, of brochures.” Applicant then attempted to amend the identification to “scholarly books on various topics, namely science, fine arts, religion, excluding books in psychology,” excluding books in psychology in an effort to obviate a refusal of registration in light of a cited registration. The examining attorney refused to accept this identification because it was outside the scope of the original identification. The identification listed above was then adopted. [fn2] Registration No. 2889623, issued September 28, 2004; Section 8 15 affidavits accepted and acknowledged. [fn3] Applicant has failed to include citations to The United States Patent Quarterly in citing many of the cases in its brief. “When cases are cited in a brief, the case citation should include a citation to The United StatesPatent Quarterly (USPQ), if the case has appeared in that publication.” TBMP ? 801.03 (2d ed., revised 2004); In re Carlson, 91 USPQ2d 1198, 1199 n. 2 (TTAB 2009).Applicant has objected to the Board’s consideration of the examining attorney’s brief, claiming that it was not timely filed because it was submitted more than sixty days after the date applicant filed its appeal brief. However, although applicant’s brief was filed on May 31, 2010, the Board did not forward it to the examining attorney for preparation of her appeal brief until June 2, 2010. That began the 60-day period for submission of the examining attorney’s brief, and the filing of the brief on August 2, 2010 was therefore timely. On the other hand, applicant’s reply brief, filed on August 23 and therefore 21 days after the filing of the examining attorney’s brief, was not timely filed. See Trademark Rule 2.142(b)(1). However, because the brief was filed only one day late, we have exercised our discretion and considered it.
[fn4] Applicant, although citing the du Pont case and the factors set out therein, has also cited the factors followed by the Second Circuit as set out in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 128 USPQ 411 (2d Cir. 1961), and those followed by the Ninth Circuit and set out in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 204 USPQ 808 (9th Cir. 1979). This Board follows the case law of our primary reviewing court, the Court of Appeals for the Federal Circuit, and therefore we have used the du Pont factors in analyzing the issue of likelihood of confusion. Applicant has also, in making many of its arguments, relied on infringement cases decided in federal district and circuit courts. Because the issue of infringement presents certain differences from the issue of likelihood of confusion as it concerns registrability, these cases are distinguishable from the situation in the present appeal, and we will not burden this opinion with a discussion of them. [fn5] The examining attorney submitted, with the Office action of September 16, 2006, the definition of PUBLISHING, taken from the Dictionary.com website, citing Random House UnabridgedDictionary, ? 2006. We take judicial notice of the definition of PRESS, taken from Webster’s Third NewInternational Dictionary of the English Language, unabridged, ? 1981. The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). In addition, as previously noted, the respective wording has been disclaimed in both the application and cited registration. [fn6] Applicant submitted copies of the registration information for these marks, taken from the TESS database. [fn7] For example, applicant has addressed the remainingdu Pont factors at page 18 of its brief by making conclusory statements or reiterating arguments made in connection with other factors. We find, based on the evidence of record, that these factors are neutral.