In re Powerful Vision Limited, 122815 USTTAB, 79145119

Docket Nº79145119
Opinion JudgeBergsman, Administrative Trademark Judge:
Party NameIn re Powerful Vision Limited
AttorneyPam Kohli Jacobson of Betts, Patterson & Mines P.S., for Powerful Vision Limited. Cynthia Y. Rinaldi, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney.
Judge PanelBefore Bergsman, Gorowitz and Heasley, Administrative Trademark Judges.
Case DateDecember 28, 2015
CourtUnited States Patent and Trademark Office

In re Powerful Vision Limited

No. 79145119

United States Patent and Trademark Office, Trademark Trial and Appeal Board

December 28, 2015

This Opinion is Not a Precedent of the TTAB

Pam Kohli Jacobson of Betts, Patterson & Mines P.S., for Powerful Vision Limited.

Cynthia Y. Rinaldi, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney.

Before Bergsman, Gorowitz and Heasley, Administrative Trademark Judges.

OPINION

Bergsman, Administrative Trademark Judge:

Powerful Vision Limited ("Applicant") seeks registration on the Principal Register of the mark DIAMOND X COLLECTION (in standard characters) for

Mirrors; mirrored bathroom furniture made of plastic, mild steel, stainless steel and aluminum; mirrored bathroom cabinets made of plastic, mild steel, stainless steel and aluminum; mirrored cabinets made of plastic, mild steel, stainless steel and aluminum; mirrors enhanced by electric lights, in Class 20.1

The Trademark Examining Attorney has refused registration of Applicant's mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant's mark so resembles the registered mark DIAMOND (typed drawing form) for "wooden cabinets, " in Class 20, as to be likely to cause confusion.2In addition, the Trademark Examining Attorney issued a final requirement for Applicant to disclaim the exclusive right to use the word "Collection."3

When the refusal and requirement were made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register and the requirement to disclaim the exclusive right to use the word "Collection."

I. Likelihood of Confusion

Our determination 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 U.S.P.Q.2d 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 services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.").

A. The similarity or dissimilarity of the marks.

We turn first to the du Pont likelihood of confusion 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 U.S.P.Q. at 567. In a particular case, "two marks may be found to be confusingly similar if there are sufficient similarities in terms of sound or visual appearance or connotation." Kabushiki Kaisha Hattori Seiko v. Satellite Int'l, Ltd., 29 U.S.P.Q.2d 1317, 1318 (TTAB 1991), aff'd mem., 979 F.2d 216 (Fed. Cir. 1992) (citation omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 U.S.P.Q.2d 1511, 1519 (TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 U.S.P.Q. 523, 526 (CCPA 1968) ("It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.")).

"The proper test is not a side-by-side comparison of the marks, but instead 'whether the marks are sufficiently similar in terms of their commercial impression' such that persons who encounter the marks would be likely to assume a connection between the parties." Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 U.S.P.Q.2d 1713, 1721 (Fed. Cir. 2012). See also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 U.S.P.Q. 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 U.S.P.Q.2d 1735, 1741 (TTAB 1991), aff'd mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. L'Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 U.S.P.Q. 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 U.S.P.Q. 106, 108 (TTAB 1975). Since the goods are mirrors, mirrored bathroom furniture and cabinets, and wooden cabinets, the average customer is an ordinary consumer.

The marks DIAMOND and DIAMOND X COLLECTION are similar because they share the word DIAMOND. Because Applicant's mark DIAMOND X COLLECTION incorporates Registrant's entire mark, consumers familiar with Registrant's DIAMOND wooden cabinets are likely to perceive DIAMOND X mirrored cabinets as a different line of Registrant's DIAMOND products. While the fact that Applicant's mark incorporates Registrant's entire mark does not ipso facto mean that the marks are similar, under the circumstances in this case, the Board and its primary reviewing court have often found that such marks are similar. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 U.S.P.Q.2d 1257, 1260 (Fed. Cir. 2010) (applicant's mark ML is similar to registrant's mark ML MARK LEES); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 U.S.P.Q. 406, 407 (CCPA 1967) (THE LILLY as a mark for women's dresses is likely to be confused with LILLI ANN for women's apparel including dresses); Hunter Indus., Inc. v. Toro Co., 110 U.S.P.Q.2d 1651, 1660-61 (TTAB 2014) (applicant's mark PRECISION is similar to registrant's mark PRECISION DISTRIBUTION CONTROL); In re United States Shoe Corp., 229 U.S.P.Q. 707, 709 (TTAB 1985) (CAREER IMAGE for women's clothing stores and women's clothing likely to cause confusion with CREST CAREER IMAGES for uniforms including items of women's clothing). In United States Shoe, the Board observed that "Applicant's mark would appear to prospective purchasers to be a shortened form of registrant's mark." 229 U.S.P.Q. at 709.

Likewise, consumers are likely to refer to Applicant's mark DIAMOND X COLLECTION as DIAMOND X because DIAMOND X appears as the first part of Applicant's mark and it is an arbitrary term when used in connection with the products listed in Applicant's description of goods; whereas the term COLLECTION is likely to be perceived as Applicant's collection of such products.4 "[U]sers of language have a universal habit of shortening full names – from haste or laziness or just economy of words. Examples are: automobile to auto; telephone to phone; necktie to tie; gasoline service station to gas station." In re Abcor Development Corp., 588 F.2d 511, 200 U.S.P.Q. 215, 219 (CCPA 1978) (J. Rich, concurring).

[C]ompanies are frequently called by shortened names, such as Penney's for J.C. Penney's, Sears for Sears and Roebuck (even before it officially changed its name to Sears alone), and Ward's for Montgomery Ward's, and Bloomies for Bloomingdales.

Marshall Field & Co. v. Mrs. Fields Cookies, 25 U.S.P.Q.2d 1321, 1333 (TTAB 1992). See also, Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 U.S.P.Q. 390, 395 (Fed. Cir. 1983); Big M Inc. v. The United States Shoe Co., 228 U.S.P.Q. 614, 616 (TTAB 1985).

The significance of the word "Diamond" in Applicant's mark DIAMOND X COLLECTION is further reinforced by its location as the first part of the mark. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 U.S.P.Q.2d 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 of America, 970 F.2d 874, 23 U.S.P.Q.2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word); Presto Products Inc. v. Nice-Pak Products, Inc., 9 U.S.P.Q.2d 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").

While our discussion has focused on the shared word "Diamond, " we are aware the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 U.S.P.Q.2d 1157, 1161 (Fed. Cir. 2014); In re National Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d 1005, 212 U.S.P.Q. 233, 234 (CCPA 1981) ("It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion"). On the other hand, 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., 224 U.S.P.Q. at 751. As noted above, the word "Diamond, " as the first part of...

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