IN RE RAY L. DBA HOORAY, 77776151 (TTAB 2-28-2011)
Serial No. 77776151United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: February 28, 2011Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Ray L. McMahan dba HooRay, pro se.
William T. Verhosek, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney).
Before Cataldo, Mermelstein and Ritchie, Administrative Trademark Judges.
Opinion by Cataldo, Administrative Trademark Judge:
An application was filed by Ray L. McMahan dba HooRay to register on the Principal Register the mark HooRay (in standard characters) for “illustrations, stories in illustrated form” in International Class 16.[fn1]
The trademark examining attorney refused registration under Section 2(d) of the Trademark Act on the ground that applicant’s mark, as used in connection with applicant’sPage 2
goods, so resembles the mark HOORRAY (in standard characters), previously registered on the Principal Register for goods and services including “storybooks,” in International Class 16[fn2] as to be likely to cause confusion.
When the refusal was made final, applicant appealed. Applicant and the examining attorney have filed briefs on the issue under appeal.
Form and Content of Applicant’s Brief
The examining attorney objects to “additional evidence” submitted by applicant with his appeal brief. We note, however, that the form and content of applicant’s brief does not appear to be intended to introduce additional evidence. Rather, and in a manner consistent with his responses to the examining attorney’s Office actions, applicant appears to have presented his arguments in favor of registration in the form of an illustrated story. We will therefore exercise our discretion to consider applicant’s brief to the extent it addresses the issue on appeal.
Likelihood of Confusion
Our determination of the issue of likelihood ofPage 3
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). In any likelihood of confusion analysis, however, 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).
The Marks
We turn to the first du Pont factor, i.e., whether applicant’s HooRay mark and registrant’s HOORRAY mark are similar or dissimilar when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We note initially that the test under the first du Pont factor 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 that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is onPage 4
the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In comparing the marks, we find that applicant’s HooRay mark is nearly identical to the registered mark HOORRAY in appearance, differing only in the absence of the additional letter “R” that is present in the middle of registrant’s mark. Similarly, the marks are nearly identical in sound, consisting of the same letters in the same order with the exception of the additional letter “R” in registrant’s mark which, due to its position, does not appear to create a significant difference in pronunciation. It is settled that there is no correct pronunciation of a trademark. See In re Teradata Corporation, 223 USPQ 361, 362 (TTAB 1984). Nonetheless, there is no evidence of record to suggest that HooRay would be pronounced differently from HOORRAY. With regard to meaning, there is no evidence of record that the marks have any readily recognized significance as applied to the goods. As a result, it would appear that HooRay and HOORRAY are arbitrary or perhaps slightly suggestive terms as applied to the identified goods.Page 5
We note that the mark in the cited prior registration is presented in all capital letters (HOORRAY), while the mark in the subject application appears in mixed case (HooRay). Nonetheless, like the cited registration, the drawing in the cited application seeks registration as a “standard character” mark. A standard character drawing covers the words in the mark, but is not limited to any particular depiction of that word, and can be used in any manner of display. In other words, we cannot distinguish the marks on the basis that applicant’s drawing depicts its mark in upper- and lower-case letters, while the prior registrant’s mark is depicted on upper-case letters only. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); INB Nat’l Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992).
In view of the foregoing, we find that HooRay and HOORRAY are nearly identical in appearance and sound. To the extent either mark has a particular meaning or connotation as applied to the identified goods, such meaning or connotation is likely to be the same. We find, therefore, that overall the marks convey highly similar commercial impressions. As such, this du Pont factor favors a finding of likelihood of confusion.Page 6
The Good
We next compare applicant’s goods, namely, “illustrations, stories in illustrated form” with the “storybooks” of registrant. In this case, registrant’s “storybooks” are broadly identified and must be presumed to include illustrated storybooks. See, for example, Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Thus, as identified, registrant’s goods are highly similar to applicant’s “stories in illustrated form.”
In addition, the examining attorney has made of record approximately a dozen use-based third-party registrations which show that various entities have adopted a single mark for both applicant’s and registrant’s goods. See, for example:
Registration No. 3350414 for children’s storybooks, and stories in illustrated form;
Registration No. 3340011 for illustrations, children’s storybooks;
Registration No. 3428429 for illustrations, stories in illustrated form, story books;
Registration No. 3141956 for illustrations, stories in illustrated form, story books; and
Registration No. 3412744 for illustrations, story books.Page 7
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, 1786 (TTAB 1993). The evidence of record establishes that applicant’s goods are closely related to the goods identified in the cited registration, and further may be identified under the same mark. As such, this du Pont factor further favors a finding of likelihood of confusion.
Channels of Trade
Furthermore, it is settled that in making our determination regarding the relatedness of the goods, we must look to those goods as identified in the involved application and cited registration. See Octocom Systems, Inc. v. Houston Computers Services Inc., 16 USPQ2d at 1787. See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.”) In this case, neither applicant’s nor registrant’s recitation of goods contains any restrictions with regard either to the channels of trade or the consumers to whom the goods are marketed. Accordingly,Page 8
both applicant’s and registrant’s goods are presumed to move in all normal channels of trade and be available to all classes of potential consumers, including consumers of each others’ goods. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). This du Pont factor also favors a finding of likelihood of confusion.
Conclusion
Neither applicant nor the examining attorney has discussed any of the remaining du Pont factors. We note, nonetheless, that none seems to be applicable, inasmuch as we have no evidence with respect to them.
In light of the foregoing, we conclude that consumers familiar with registrant’s goods sold under its above-referenced mark would be likely to believe, upon encountering applicant’s closely related goods offered under its mark that the goods originated with or are somehow associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.
[fn1] Application Serial No. 77776151 was filed on July 8, 2009, based upon applicant’s assertion of November 1, 2001 as a date of first use of the mark in commerce. [fn2] Registration No. 3616503 issued on May 5, 2009, reciting goods and services in International Classes 16, 39, 40 and 42.