In re El Galan, Inc.

• Decision Date: 01 February 2018
• Docket Number: 86961428
• Court: Trademark Trial and Appeal Board
• Parties: In re El Galan, Inc.

In re El Galan, Inc.

No. 86961428

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

February 1, 2018

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

Frank Herrera of H New Media Law, for El Galan, Inc.

Clare Cahill, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney.

Before Taylor, Pologeorgis and Larkin, Administrative Trademark Judges.

OPINION

POLOGEORGIS, ADMINISTRATIVE TRADEMARK JUDGE

El Galan, Inc. ("Applicant") seeks registration on the Principal Register of the mark TERNURA (in standard characters) for "cigars" in International Class 34.^[1]

The Trademark Examining Attorney refused registration of Applicant's mark under Section 2(d) of the Trademark Act 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the registered mark TERNURA (also in standard characters) for "liquor; tequila; vodka; wines" in International Class 33.^[2]

When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal resumed. We affirm the refusal to register.^[3]

I. Preliminary Matter – Evidentiary Objection

We initially turn to an evidentiary objection lodged by the Examining Attorney regarding evidence presented by Applicant for the first time with its appeal brief. The Examining Attorney objects to various search results from Yahoo, Bing, and Google,^[4]as well as the submission of a screenshot from the Alcohol and Tobacco Tax and Trade Bureau website, an Alcohol and Tobacco Tax and Trade Bureau Certificate of Label Approval/Exemption form, and an image of Registrant's specimen of use attached as exhibits to Applicant's appeal brief.

It is well-settled that the record in an ex parte proceeding should be complete prior to appeal. Trademark Rule 2.142(d); 37 CFR § 2.142(d). Exhibits that are attached to a brief but not made of record during examination are untimely, and will not be considered. See In re Fitch IBCA, Inc., 64 U.S.P.Q.2d 1058, 1059 n.2 (TTAB 2002); see also TBMP §§ 1203.02(e) and 1207.01 (June 2017). To the extent Applicant wished to introduce additional evidence after its appeal had been filed, Applicant should have filed a written request with the Board to suspend the appeal and remand the application for further examination pursuant to Trademark Rule 2.124(d). Applicant did not do so. Accordingly, we give this evidence submitted for the first time with the appeal brief no further consideration in our analysis. In view thereof, the Examining Attorney's evidentiary objection is sustained.^[5]

II. Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all 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., 315 F.3d 1311, 65 U.S.P.Q.2d 1201, 1203 (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. 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. Similarities of the Marks

Regarding the first du Pont factor, the similarity of the marks, we note that the the marks are identical, standard character marks. The identity of the marks "weighs heavily" in support of finding a likelihood of confusion. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 U.S.P.Q. 1289, 1290 (Fed. Cir. 1984). And because the marks are identical, the degree of similarity between the goods that is required to support a finding of likelihood of confusion is reduced. In re Shell Oil Co., 992 F.2d 1204, 26 U.S.P.Q.2d 1687, 1689 (Fed. Cir. 1993); Time Warner Ent'mt Co. v. Jones, 65 U.S.P.Q.2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 U.S.P.Q.2d 1812, 1815 (TTAB 2001).

Applicant argues that the marks convey different commercial impressions in relation to the involved goods because they travel in different trade channels and use different types of packaging.^[6] Applicant's arguments are unpersuasive. As explained infra, the evidentiary record demonstrates that Applicant's cigars and Registrant's alcoholic beverages travel in similar channels of trade. Nor are we persuaded by Applicant's argument that we must look to the product packaging or other extrinsic evidence of the manner in which Applicant's mark and the cited mark are used in the marketplace to determine the similarities between the marks. Rather, for purposes of our Section 2(d) analysis, we must compare the marks as they appear in the cited registration and application. Shell Oil Co., 26 U.S.P.Q.2d at 1690 n.4 ("Although Shell argues that its use of RIGHT-A-WAY would be in association with other Shell trademarks, the proposed registration is not so limited. Registrability is determined based on the description in the application, and restrictions on how the mark is used will not be inferred."). Notwithstanding, while cigars and alcoholic beverages may be packaged differently, consumers may nonetheless be confused as to the source of the goods when their packages bear the identical trademark.

Applicant also argues that even marks that are identical in sound or appearance may create sufficiently different commercial impressions when applied to the parties' respective goods or services so that there is no likelihood of confusion.^[7] In support of its argument, Applicant cites the following cases:

In re Sears, Roebuck & Co., 2 U.S.P.Q.2d 1312, 1314 (TTAB 1987) (holding CROSS-OVER for bras and CROSSOVER for ladies' sportswear not likely to cause confusion, noting that the term "CROSS-OVER" was suggestive of the construction of applicant's bras, whereas "CROSSOVER," as applied to registrant's goods, was "likely to be perceived by purchasers either as an entirely arbitrary designation, or as being suggestive of sportswear which "crosses over" the line between informal and more formal wear . . . or the line between two seasons");

In re British Bulldog, Ltd., 224 U.S.P.Q. 854, 856 (TTAB 1984) (holding PLAYERS for men's underwear and PLAYERS for shoes not likely to cause confusion, agreeing with applicant's argument that the term "PLAYERS" implies a fit, style, color, and durability suitable for outdoor activities when applied to shoes, but "'implies something else, primarily indoors in nature'" when applied to men's underwear); and

In re Sydel Lingerie Co., 197 U.S.P.Q. 629, 630 (TTAB 1977) (holding BOTTOMS UP for ladies' and children's underwear and BOTTOMS UP for men's clothing not likely to cause confusion, noting that the wording connotes the drinking phrase "Drink Up" when applied to men's clothing, but does not have this connotation when applied to ladies' and children's underwear).

Unlike the circumstances in the cases cited by Applicant, the mark TERNURA or the English translations thereof, i.e., kindness or tenderness, do not impart a distinct meaning when applied to cigars or alcoholic beverages; instead, consumers would perceive them as arbitrary terms as applied to the parties' respective goods. Accordingly, the cited cases are inapposite to our analysis of the similarities of the marks in this appeal.

The marks at issue are identical in sound, appearance, connotation and commercial impression. In view thereof, we find that the first du Pont factor weighs strongly in favor of finding a likelihood of confusion.

B. Similarity of the Goods

The next step in our analysis is a comparison of the goods identified in Applicant's application vis-à-vis the goods identified in the cited registration, the second du Pont factor. See Stone Lion Capital Partner, LP v. Lion Capital LLP, 746 F.3d 1317, 110 U.S.P.Q.2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computs. Servs. Inc., 918 F.2d 937, 16 U.S.P.Q.2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.2d 1261, 62 U.S.P.Q.2d 1001, 1004 (Fed. Cir. 2002). It is settled that it is not necessary that the respective goods be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis. The respective goods need only be "related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that goods emanate from the same source." Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1010 U.S.P.Q.2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 U.S.P.Q.2d 1715, 1724 (TTAB 2007)); see also Martin's Famous Pastry Shoppe, 223 U.S.P.Q. at 1290; In re Melville Corp., 18 U.S.P.Q.2d 1386, 1388 (TTAB 1991).

Evidence of relatedness may include news articles or evidence from computer databases showing that the relevant goods are used together or used by the same purchasers; advertisements showing that the relevant goods are advertised together or offered by the same manufacturer or dealer; or copies of prior use-based registrations of the same mark for both Applicant's goods and the goods identified in the cited registration. In re Davia, 110 U.S.P.Q.2d 1810, 1817 (TTAB 2014) (finding pepper sauce and agave sweetener related where evidence showed both were used for the same purpose in the same recipes and thus consumers were likely to purchase the products at the same time and in the same stores). Even when goods are not intrinsically related, the use of identical marks can lead to the assumption that there is a common...