IN RE TRUE COLORS INTL., 77718071 (TTAB 4-27-2011)
Serial No. 77718071United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: April 27, 2011Page 1
Kit M. Stetina of Stetina Brunda Garred Brucker for True Colors International.
Raul Cordova, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney).
Before Kuhlke, Bergsman and Ritchie, Administrative Trademark Judges.
Opinion by Bergsman, Administrative Trademark Judge:
True Colors International (“applicant”) filed an intent-to-use application for the mark TRUE LOVE COLORS, in standard character form, for “dating services and counseling services, namely, offering advice regarding personal relations,” in Class 45. Applicant claims ownership of the following registrations:
1. Registration No. 1606983 for the mark TRUE COLORS, in typed drawing form, for “educational seminarsPage 2
directed toward professional behavior analysis and emotional self-improvement,” in Class 41;[fn1] and
2. Registration No. 2754171 for the mark TRUE COLORS UNIVERSITY, in typed drawing form for “educational services, namely, classes available on campus, off site, or through distance learning, in the field of behavior studies,” in Class 41.[fn2]
Registration has been refused under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. ? 1052(d), on the ground that applicant’s mark, when used in connection with “dating services and counseling services, namely, offering advice regarding personal relations,” so resembles the previously registered marks TRUE LOVE, in standard character form, for “personal coaching services in the fields of dating, compatibility, social relationships, personal improvement, self-development and self awareness,” in Class 41[fn3]
and “computer dating services; dating services; providing information in the field of self-improvement; video dating services,” in Class 45[fn4] as to bePage 3
likely to cause confusion. Both of the cited registrations are owned by the same entity.
Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973);see also, In re Majestic Distilling Company, Inc.,315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). 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).
A. The similarity or dissimilarity and nature of theservices and the similarity or dissimilarity oflikely-to-continue trade channels and classes ofconsumers.
The services at issue are in part identical. Because the services described in the application and the cited registrations are in part identical, we must presume that the channels of trade and classes of purchasers are the same.See 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 tradePage 4
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”).
B. The similarity or dissimilarity of the marks in theirentireties as to appearance, sound, connotation and commercialimpression.
We now turn to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.In re E. I. du Pont De Nemours Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar.In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we are mindful that where, as here, the services are in part identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services. Century 21 Real Estate Corp. v. Century Life ofAmerica, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-PloughPage 5HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007); Jansen Enterprises Inc. v.Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
Moreover, in comparing the marks, the 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 and services offered under the respective marks is likely to result. SanFernando Electric Mfg. Co. v. JFD Electronics ComponentsCorp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); SpoonsRestaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The marks are similar to the extent that they share the term TRUE LOVE. “True Love” is a unitary a term that means “a sweetheart; a truly loving or loved person.”[fn5]
“True Love” is a significant element of applicant’s mark because of its location as the first part of the mark. SeePresto Products Inc. v. Nice-Pak Products, Inc.,Page 6
9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); see also Palm Bay Imports Inc.v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label);Century 21 Real Estate Corp. v. Century Life ofAmerica, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers must first notice the identical lead word).
We also note that applicant’s mark TRUE LOVE COLORS has incorporated the entirety of the cited mark TRUE LOVE. Likelihood of confusion is often found where the entirety of one mark is incorporated within another. The Wella Corp, v.California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design for men’s cologne, hair spray, conditioner and shampoo is likely to cause confusion with the mark CONCEPT for cold permanent wave lotion and neutralizer); Coca-Cola Bottling Co. v. Seagram Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and soldier design for club soda, quinine water and ginger ale is likely to causePage 7
confusion with BENGAL LANCER for gin); In re WestPoint-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972) (WEST POINT PEPPERELL and griffin design for fabrics is likely to cause confusion with WEST POINT for woolen piece goods).
Applicant’s addition of the word “Colors” to the mark TRUE LOVE COLORS does not change the unitary nature or meaning of the term “True Love.” Accordingly, in view of the identity of the services, consumers are likely to mistakenly believe that TRUE LOVE COLORS is a variation or derivative of the previously registered TRUE LOVE.
In this regard, we find that the cases cited by applicant are inapposite to the facts in this appeal for the proposition that “the mere fact that a junior mark contains in part the whole of another’s mark does not result in an automatic finding of likelihood of confusion if the overall appearance of marks is considered”.[fn6] In In re MerchandisingMotivation, Inc., 184 USPQ 364 (TTAB 1974), the Board found that the common term “Menswear” in applicant’s mark was merely descriptive and, thus, did not serve as an indicator of source. In this case, the common term “True Love” is not descriptive.Page 8
In In re P. Ferrero C.S.p.A., 178 USPQ 167 (TTAB 1973), the Board found that the mark TIC TAC had a different meaning and conveyed a different commercial impression than the mark TIC TAC TOE in the cited registration. In this case, we find that the term “True Love” has the same meaning and conveys the same commercial impression in both marks.
Finally, in Colgate-Palmolive Co. v. Carter-Wallace,Inc., 167 USPQ 529 (TTAB 1970), the Board found that the marks PEAK and PEAK PERIOD had obvious differences in appearance and sound and that they were used in connection with different products. In this case, the marks are used on identical services and we have found that the marks are similar in appearance, sound, meaning and common commercial impression by virtue of sharing the term “True Love.”
Applicant also argues that its mark TRUE LOVE COLORS calls to mind its house mark TRUE COLORS and, therefore, the marks are not similar.[fn7] We disagree. Because “True Love” is a unitary term, consumers will not dissect the mark TRUE LOVE COLORS to make the connection with applicant’s house mark.Page 9
In view of the foregoing, we find that the marks are similar in terms of appearance, sound, meaning and commercial impression.
C. Balancing the factors.
In view of the facts that the marks are similar, the services are in part identical, and that we must presume that the services move in the same channels of trade and are available to the same classes of consumers, we find that applicant’s registration of the mark TRUE LOVE COLORS for “dating services and counseling services, namely, offering advice regarding personal relations” is likely to cause confusion with TRUE LOVE for “personal coaching services in the fields of dating, compatibility, social relationships, personal improvement, self-development and self awareness” and “computer dating services; dating services; providing information in the field of self-improvement; video dating services.”
Decision: The refusal to register is affirmed.
[fn1] Issued July 10, 1990; second renewal. [fn2] Issued August 19, 2003; Sections 8 and 15 affidavits accepted and acknowledged. [fn3] Registration No. 3574133, issued February 10, 2009. [fn4] Registration No. 3574134, issued February 10, 2009. [fn5] The Random House Dictionary of the EnglishLanguage, p. 2029 (2nd ed. 1987). See alsoWebster’s Third New International Dictionary(Unabridged), p. 2455 (1993) (“faithful love . . . one truly beloved or loving”). The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v.J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). [fn6] Applicant’s Brief, p. 4. [fn7] Applicant’s Brief, pp. 3-6.