Likelihood of Confusion - Similarity of established trade channels



As stated in section 1207.01 Likelihood of Confuion of the Trademark Manual of Examination Procedure: In the ex parte examination of a trademark application, a refusal under §2(d) is normally based on the examining attorney's conclusion that the applicant's mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. (See TMEP §1207.02 concerning §2(d) refusals to register marks that so resemble another mark as to be likely to deceive, and TMEP §1207.03 concerning §2(d) refusals based on unregistered marks. Note: Refusals based on unregistered marks are not issued in ex parte examination.)

The examining attorney must conduct a search of Office records to determine whether the applicant's mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates. See TMEP §§1208 et seq. regarding conflicting marks. The examining attorney must place a copy of the search strategy in the file.

If the examining attorney determines that there is a likelihood of confusion between applicant's mark and a previously registered mark, the examining attorney refuses registration under §2(d). Before citing a registration, the examining attorney must check the automated records of the Office to confirm that any registration that is the basis for a §2(d) refusal is an active registration. See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 of the Act or expiration of a cited registration for failure to renew under §9 of the Act.

Also, if Office records indicate that an assignment of the conflicting registration has been recorded, the examining attorney should check the automated records of the Assignment Services Branch of the Office to determine whether the conflicting mark has been assigned to applicant.

In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. In ex parte examination, the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services. The other factors listed in du Pont may be considered only if relevant evidence is contained in the record. See In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003) ("Not all of the DuPont factors may be relevant or of equal weight in a given case, and ‘any one of the factors may control a particular case,'" quoting In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); In re National Novice Hockey League, Inc., 222 USPQ 638, 640 (TTAB 1984). In an ex parte case, the following factors are usually the most relevant:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing.
  • The number and nature of similar marks in use on similar goods.
  • A valid consent agreement between the applicant and the owner of the previously registered mark.

The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining and articulating likelihood of confusion:

The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). On the other hand, in 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 (footnote omitted). Indeed, this type of analysis appears to be unavoidable.

In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985).

There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein. Each case must be decided on its own facts.

The determination of likelihood of confusion under §2(d) in an intent-to-use application does not differ from the determination in any other type of application.

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  • The third du Pont factor requires a determination of the similarity or dissimilarity of the trade channels and classes of purchasers for the parties' respective services.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Under the third du Pont factor, we must determine the similarity or dissimilarity of the trade channels and classes of purchasers for the parties' respective services. Because there are no limitations as to trade channels or classes of purchasers in either applicant's or opposer's respective application and registrations, we must presume that each party's services are marketed in all normal trade channels and to all normal classes of purchasers for such services. In re Elbaum, 211 USPQ 639 (TTAB 1981).
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • Under the third du Pont factor, we consider the similarity or dissimilarity in the trade channels in which the respective goods and services are marketed and, relatedly, the similarity or dissimilarity in the classes of purchasers of the goods and services.
  • There are no limitations or restrictions in the cited registrations as to the trade channels and classes of purchasers for the identified goods and services, and we therefore must presume that those goods and services are offered in all normal trade channels and to all normal classes of purchasers for such goods and services.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • Under the third du Pont factor (similarity or dissimilarity of trade channels), we find that applicant's goods as identified in the application are or can be marketed in the same trade channels and to the same classes of purchasers as opposer's goods. This clearly is the case with respect to those goods of applicant's which are legally identical to opposer's goods, i.e., newsletters and recipes printed on food packaging. Moreover, there are no trade channel or class of purchaser limitations in applicant's identification of goods, so we must presume that applicant's goods are or would be marketed in all normal trade channels and to all normal classes of purchasers for such goods. See In re Elbaum, 211 USPQ 639 (TTAB 1981).
    • In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999).
      • Because no trade channel limitations have been included in either applicant's recitation of services nor in the registration's recitation of services, we must presume that applicant and registrant are entitled to offer their services in all normal trade channels for such services, and to all normal classes of customers for such services. See In re Elbaum, 211 USPQ 639 (TTAB 1981).
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • There are no limitations or restrictions in the cited registrations as to the trade channels and classes of purchasers for the identified goods and services, and we therefore must presume that those goods and services are offered in all normal trade channels and to all normal classes of purchasers for such goods and services. In re Elbaum, 211 USPQ 639 (TTAB 1981).
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • The goods identified in the cited registration are "canned peaches, apples, stringless beans, lima beans, corn, sweet potatoes, tomatoes, and tomato products." This identification includes no limitation as to trade channels or classes of purchasers. Accordingly, we must presume that registrant's goods are marketed in all normal trade channels for such goods and to all normal classes of purchasers for such goods. See In re Elbaum, 211 USPQ 639 (TTAB 1981).
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • Inasmuch as the identifications of goods do not include any limitations, it is assumed that the goods move through the same trade channels, namely all trade channels normal for goods of this type in the healthcare field. These would in the future include hospitals and other healthcare facilities. However, the goods, as identified, are not limited to hospital use, and it is reasonable to assume that, at some point in the future, the drugs may be dispensed outside of the hospital setting, perhaps even as medications which can be taken by the patient at home. Dr. Costanzi touched on this point when he testified about the coming days of "brown bag" pharmaceuticals. (Dep., pp. 14- 16). Thus, the precautionary controls over cancer-treating drugs that generally exist within the hospital may be lost when prescriptions for such drugs might be filled at the local drug store or pharmacy.
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • We also note, however, that the identifications of goods are not limited to commercial and institutional customers. Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).
    • Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006).
      • In the absence of any limitations in the parties' identifications of goods, we must presume that the goods move through all reasonable trade channels for such goods to all usual classes of consumers for such goods. Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989); Morton-Norwich Products, Inc. v. N. Siperstein, Inc., 222 USPQ 735, 736 (TTAB 1984); and In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)["[W]here the goods in a cited registration are broadly described and there are no limitations in the identifications of goods as to their nature, type, channels of trade or classes of purchasers, it is presumed that the scope of the registration encompasses all goods of the nature and type described, that the identified goods move in all channels of trade that would be normal for such goods, and that the goods would be purchased by all potential customers."]. Accordingly, in addition to the trade channels mentioned above, it must be presumed that the parties' goods will also be sold in retail outlets like grocery stores, drug stores and warehouse merchandisers. Likewise, it is presumed that the goods will be purchased by ordinary consumers, employing nothing more than ordinary care in their purchasing decision.
    • In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006).
      • Both the application and the cited registration are for the same goods, namely fence rails. Because the goods are identical, and there are no restrictions in the identification of goods, we must presume that the fence rails are sold in all normal trade channels and to all normal classes of purchasers for such goods, and that the channels of trade and classes of purchasers of applicant's and registrant's goods are the same. See Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
    • Mattel, Inc. v. Funline Merchandise Co., Inc., Cancellation No. 92040128, (TTAB 2006).
      • Further, in the absence of any limitations in either petitioner's registration or respondent's registration with respect to channels of trade, or classes of purchasers, we must assume that petitioner and respondent sell their respective goods in all of the usual trade channels for goods of this type, e.g., toy stores and mass merchandisers, to all normal classes of customers therefor, e.g., children and adults.
    • In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006).
      • It is well settled that absent any specific limitations or restrictions in the identifications of goods as listed in the applicant's application and the registrant's registration, the issue of likelihood of confusion must be determined in light of consideration of all normal and usual channels of trade and methods of distribution for the respective goods and on the basis of all customary customers therefor. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (CCPA 1973).
    • In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006).
      • Accordingly, because both applicant's goods and those of the registrant are identified without limitation as to trade channels or purchasers, the goods must be presumed to be suitable for sale through all normal and usual trade channels therefor (e.g., clothing stores, and mass merchandisers) to all the usual classes of purchasers. See, e.g., In re Elbaum, 211 USPQ 639 (TTAB 1981).
  • Case Finding: Examples of the determination of trade channels.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • Such trade channels would include all normal retail trade channels for health food products and printed materials related thereto, and the classes of purchasers would include ordinary consumers, including consumers of health food products and information. Any asserted limitations in applicant's current or actual trade channels (i.e., mail order) are immaterial, given the absence of such limitations in applicant's identification of goods. We conclude that the third du Pont factor accordingly weighs in opposer's favor in our likelihood of confusion analysis.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • As for the third du Pont factor, we find that applicant's goods and opposer's goods move in the same trade channels. There are no limitations in either applicant's or opposer's respective identifications of goods, so we must presume that the goods travel in all trade channels normal for such goods. See Canadian Imperial Bank of Commerce, supra. Furthermore, it is clear from the testimony of applicant and of opposer's witnesses that the parties' respective goods are marketed in the same trade channels and by some of the same retail chains, e.g., CostCo, Office Depot, and Barnes & Noble. For these reasons, we find that the third du Pont factor weighs in opposer's favor in this case.
  • The mere fact that two products may move in the same channels of trade to the same class of purchasers does not, ipso facto, prove that there is a definite relationship between the two types of goods.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • The mere fact that two products may move in the same channels of trade to the same class of purchasers does not, ipso facto, prove that there is a definite relationship between the two types of goods. Champion International Corporation v. Genova, Inc., 199 USPQ 301, 305 (TTAB 1978). See also, Recot Inc. v. M.C. Becton, supra, 54 UPSQ2d at 1899 (although parties' goods are sold in some of the same channels of trade, including supermarkets and grocery stores, there is no per se rule that all products sold within supermarkets are related by virtue of being sold in same establishments).
  • Where the parties' respective application and registrations are unrestricted, and applicant's goods and services are identical to some of opposers' goods and services, it must be presumed that at such time as applicant were to use his mark on the identified goods and recited services, the parties' respective goods and services will be traveling through the same channels of trade to the same classes of consumers.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • Because the parties' respective application and registrations are unrestricted, and applicant's goods and services are identical to some of opposers' goods and services, we must presume that at such time as applicant were to use his mark on the identified goods and recited services, the parties' respective goods and services will be traveling through the same channels of trade to the same classes of consumers. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002) ("[A]bsent restrictions in the application and registration, goods and services are presumed to travel in the same channels of trade to the same class of purchasers."); and Kangol Ltd. v. KangaRoos U.S.A., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992).
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • Applicant does not attempt to reach the parties' common customers through the same retail stores or websites that opposer utilizes. In fact, applicant does not appear to utilize retailers as a trade channel and its website sales appear to be limited to its own website. However, because the parties do not limit the channels of trade in their respective identifications, we must assume that they could use the same channels of trade for these legally identical goods even if they are not now doing so. Kangol Ltd. v. KangaROOS U.S.A., Inc. 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992) ("There is no evidence that opposer's and applicant's goods are currently being sold in the same channels of trade. Yet, in neither the applicant's application nor the opposer's registrations are the trade channels in any way restricted. The issue of likelihood of confusion is resolved by considering the 'normal and usual channels of trade and method of distribution.'") (citations omitted).
  • Absent limitations on goods or price in the identification of goods, one must consider that the goods will include those sold at a full range of prices, and be sold to a wide range of prospective consumers in all usual channels of trade.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • We note, however, that neither identification of goods limits the hardware or software products to traveling in only certain channels of trade or only to certain classes of consumers. Thus, we must consider that the identified products will include those sold at a full range of prices, and be sold to a wide range of prospective consumers in all usual channels of trade for computer products. In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (The second DuPont factor "mandates consideration of the similarity or dissimilarity of the services as described in an application or registration").
  • Merely because parties operate in the same broad industry does not, by itself, establish that their goods and services are related.
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • Merely because parties operate in the same broad industry does not, by itself, establish that their goods and services are related. Saks & Co. v. Snack Food Association, 12 USPQ2d 1833, 1835 (TTAB 1989) ("Merely because opposer sells what can be characterized as snack foods, even snack foods bearing the ‘SFA' logo, in its retail establishments, does not create a sufficient nexus with the association services applicant renders to the snack food industry"); In re Quadram Corporation, 228 USPQ 863, 865 (TTAB 1985) ("[W]e think that a per se rule relating to source confusion vis-a-vis computer hardware and software is simply too rigid and restrictive an approach and fails to consider the realities of the marketplace").
  • Where the goods in the application at issue and/or in the cited registration are broadly identified as to their nature and type, such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses not only all the goods of the nature and type described therein, but that the identified goods are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential buyers thereof.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • Where the goods in the application at issue and/or in the cited registration are broadly identified as to their nature and type, such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses not only all the goods of the nature and type described therein, but that the identified goods are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
  • Likelihood of confusion must be found if there is likelihood of confusion involving any item that comes within the identification of goods in the involved application. It is therefore unnecessary to determine whether each of the other items set forth in the involved application are so related to those in the cited registration that confusion would be likely.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • In comparing the goods, we focus our attention on the fact that both applicant's and registrant's identifications of goods include "furniture." Applicant's attempt to distinguish its furniture from registrant's furniture is to no avail. Registrant's furniture is not limited in any way as to nature, type, use or purpose and, thus, is broad enough to encompass the type of furniture sold by applicant. When construed as such, the goods are, in part, legally identical. Likelihood of confusion must be found if there is likelihood of confusion involving any item that comes within the identification of goods in the involved application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). It is therefore unnecessary to rule as to whether each of the other items set forth in the involved application are so related to those in the cited registration that confusion would be likely.5
  • Third-party registrations that individually cover different items and that are based on use in commerce serve to suggest that the listed goods and/or services are of a type that may emanate from a single source.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • FOOTENOTE 5 "We note, however, that some of the goods are related. In particular, applicant's identification includes items such as office furniture and desks, while registrant's identification includes desk accessories and other items for use with office furniture. In this connection, the examining attorney introduced numerous use-based third-party registrations showing that each of those registrants adopted a single mark for these types of goods. Third-party registrations that individually cover different items and that are based on use in commerce serve to suggest that the listed goods and/or services are of a type that may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988)."
  • Given that applicant's and registrant's goods are legally identical, it is assumed that these goods travel in the same channels of trade, and that the same classes of purchasers buy these goods.
    • In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006).
      • Given that applicant's and registrant's "furniture" is legally identical, we assume that these goods travel in the same channels of trade (e.g., retail furniture stores), and that the same classes of purchasers buy these goods.
  • Thus, where the goods in an involved registration are broadly identified as to their nature and type, such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses all the goods of the nature and type described therein, that the identified goods are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential buyers thereof.
    • Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007).
      • Thus, where the goods in an involved registration are broadly identified as to their nature and type, such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses all the goods of the nature and type described therein, that the identified goods are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential buyers thereof. Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
  • Because the goods of both parties are at least overlapping, we must presume that the purchasers and channels of trade would at least overlap.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • Because the goods of both parties are at least overlapping, we must presume that the purchasers and channels of trade would at least overlap. 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"). See also In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) ("Where the services in the application at issue and/or in the cited registration are broadly identified as to their nature and type, such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the recitation of services encompasses not only all the services of the nature and type described therein, but that the identified services are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential buyers thereof").
  • The means of distribution and sale, although certainly relevant, are areas of peripheral inquiry. The fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • Two key considerations are the marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("The means of distribution and sale, although certainly relevant, are areas of peripheral inquiry. The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.").
  • Inasmuch as the services are overlapping, we must assume that the purchasers and channels of trade are also the same.
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • We add that inasmuch as the services are overlapping, we must assume that the purchasers and channels of trade are also the same. "Where the goods in the application at issue and/or in the cited registration are broadly identified as to their nature and type, such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses not only all the goods of the nature and type described therein, but that the identified goods are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential buyers thereof." In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). See also In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
  • To the extent that both parties are engaged in retail activities and may employ similar channels of trade and have some overlap in customers, these issues are considered under other duPont factors, not under the factor focusing on the similarity or relatedness of the goods and services
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • In sum, we find no similarity or relatedness between the parties' respective goods and services. To the extent that they both are engaged in retail activities and may employ similar channels of trade and have some overlap in customers, these issues are considered under other duPont factors, not under the factor focusing on the similarity or relatedness of the goods and services.
  • One must consider channels of trade and classes of consumers based on the identifications in the involved applications and registrations and not the actual channels.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • Applicant's witness LaRochelle testified at length about the vast majority of its sales being made to business customers and that its walk-in business is minimal. (LaRochelle disc. dep. pp.52-53 and 57-59; La Rochelle test. pp.25-27, 42 and 48) Nonetheless, we must consider channels of trade and classes of consumers based on the identifications in the involved applications and registrations. Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Applicant's identification of its retail store services is not limited to retailing to other businesses and must be read to encompass retailing to the home user of personal computers as well as the business user.
  • Where the channels of trade are not limited, the analysis of likelihood of confusion must assume that the goods will be marketed to all possible consumers.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • Moreover, the channels of trade are not limited, so our analysis of likelihood of confusion must assume that the goods will be marketed to all possible consumers. Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).
  • Because the goods and services are closely related, and there are no restrictions as to their channels of trade or classes of purchasers, they must be deemed to be promoted in the same channels of trade and directed to the same purchasers.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Because the goods and services are closely related, and there are no restrictions as to their channels of trade or classes of purchasers, they must be deemed to be promoted in the same channels of trade and directed to the same purchasers. Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000).
  • It must be assumed that, because the identifications in opposers' registrations and applicant's application contain no restrictions on channels of trade, that the parties' goods would be sold in the same channels of trade, then opposers' evidence of their broad channels of trade would likely encompass or overlap with applicant's channels of trade at the point that applicant actually sells its goods in commerce.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • Thus, not only must we assume, because the identifications in opposers' registrations and applicant's application contain no restrictions on channels of trade, that the parties' goods would be sold in the same channels of trade, but opposers' evidence of their broad channels of trade would likely encompass or overlap with applicant's channels of trade at the point that applicant actually sells its goods in commerce. In addition, the price of opposers' goods indicates that many of these items (such as posters, auto and bike tags, mugs, and T-shirts) would not involve careful or sophisticated purchasers. Proper affidavit at 5 (The price points for opposers' goods begin at just "a few dollars"). On the contrary, these items must be considered impulse purchases.
  • Merely because both parties provide retail store services and use similar methods of advertising does not mean that their respective services will be offered to consumers under circumstances and through channels of trade which would create a likelihood of confusion.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • However, as for the respective retail store services in this case, the mere fact that opposer and applicant provide such services is not sufficient reason to conclude the services may be offered together. Each provides these services through its own stores and web sites. There is nothing in applicant's identification that suggests that its retail store services focusing on computer hardware and software and peripherals would be rendered through a retail store focusing on sporting goods and equipment, apparel and footwear, or vice versa. In sum, merely because both parties provide retail store services and use similar methods of advertising does not mean that their respective services will be offered to consumers under circumstances and through channels of trade which would create a likelihood of confusion.14

        FOOTNOTE 14 "Of course, there are instances in which different types of services are rendered through retail establishments, as a retailer might contract with any number of businesses to provide, for example, delivery, installation, repair or maintenance services related to the goods it sells in its retail stores. We do not mean to suggest that goods can move through the same channels of trade but services cannot. Rather, we make the specific point that retail store services from different retailers are, almost by definition, provided through different stores."

  • Case Finding: Consumers are sophisticated and may be expected to exercise greater care.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006)
      • However, the common purchasers for applicant's and registrant's goods must be considered sophisticated, and this factor also weighs in favor of applicant. See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ 1388, 1392 (Fed. Cir. 1992) ("Where the purchasers are the same, their sophistication is important and often dispositive because '[s]ophisticated consumers may be expected to exercise greater care.'" Internal citation omitted.)
  • Where there are no limitations as to channels of trade or classes of purchasers in either the application or the registration, it is presumed that the registration and the application encompass all of the goods of the type described in the description of goods, that the goods so identified move in all channels of trade normal for those goods, and that the products are available to all classes of purchasers for the listed products.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • Because there are no limitations as to channels of trade or classes of purchasers in either the application or the registration, it is presumed that the registration and the application encompass all of the goods of the type described in the description of goods, that the goods so identified move in all channels of trade normal for those goods, and that the products are available to all classes of purchasers for the listed products. See In re Linkvest S.A., 24 USPQ2d at 1716.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Because there are no restrictions as to channels of trade in applicant's description of services, we must assume that applicant's travel agency services are rendered in all of the normal channels of trade to all of the normal purchasers for such services, including opposer's channels of trade and purchasers. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Toys R Us v. Lamps R Us, 219 USPQ 340, 343 (TTAB 1983).
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Because there is no limitation or restriction in the description of goods in the application and opposer's registration, the goods of the parties are presumed to travel in the same channels of trade to the same class of purchasers. Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d at 1005. See also Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
  • A geographically unrestricted registration carries the presumption under Section 7(b) of the Trademark Act that applicant has the exclusive right to use the marks throughout the United States and thus the likelihood of confusion analysis is not limited to the geographic areas in which the parties actually use their marks.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Given that applicant is seeking geographically unrestricted registrations, applicant's argument that "[o]pposer's trade channel is apparently limited to persons in Hawaii in need of travel agency services" is unavailing. The geographically unrestricted registrations applicant seeks would carry the presumption under Section 7(b) of the Trademark Act that applicant has the exclusive right to use the marks throughout the United States in connection with travel agency services. Thus, we may not limit our consideration of likelihood of confusion to the geographic areas in which the parties actually use their marks.
  • Absent supporting evidence, the contention that because the goods are sold at retail as an "off the shelf" product that consumers will exercise a low degree of care does not hold.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • The evidence of record does not support opposer's contention that because deer repellant is sold at retail as an "off the shelf" product that consumers will exercise a low degree of care. Opposer has not met its burden of showing that this factor weighs in its favor.
  • Because neither applicant's identification of goods nor registrant's identification of goods includes any restrictions or limitations as to trade channels, we presume that the respective goods are or would be marketed in all normal trade channels for such goods.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Because neither applicant's identification of goods nor registrant's identification of goods includes any restrictions or limitations as to trade channels, we presume that the respective goods are or would be marketed in all normal trade channels for such goods. See In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); In re Elbaum, 211 USPQ 639 (TTAB 1981).
  • Because the goods identified in the application and opposer's pleaded registrations are legally identical, we must presume that the channels of trade and classes of purchasers are the same.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Because the goods identified in the application and opposer's pleaded registrations are legally 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 trade 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").
  • Because the goods in the application and the cited registration are identical in part, one must also presume that the channels of trade and classes of purchasers are the same.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • In addition, because the goods in the application and the cited registration are identical in part, we must also 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 trade 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").
  • Because the services identified in the application and the registrations are legally identical, we must presume that the channels of trade and classes of purchasers are the same.
    • Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009)
      • Because the services identified in the application and the registrations are legally 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 trade 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").
  • Board proceedings are determined independent of the actual geographic scope of use.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Board proceedings are determined independent of the actual geographic scope of use. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 77 (TTAB 1981).
  • Case Finding: Although the record reveals that applicant has only sold clothing items in New Jersey, his identification of goods is unlimited as to classes of consumers or channels of trade or geographic scope. Because we must therefore assume that the goods will be marketed in all customary channels of trade for, and to all customary consumers for, clothing items, consumers outside applicant's hometown are unlikely to equate MTOWN with Middletown, New Jersey.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • Although the record reveals that applicant has only sold clothing items in New Jersey, his identification of goods is unlimited as to classes of consumers or channels of trade or geographic scope. Because we must therefore assume that the goods will be marketed in all customary channels of trade for, and to all customary consumers for, clothing items, see Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990), consumers outside applicant's hometown are unlikely to equate MTOWN with Middletown, New Jersey.
  • Case Finding: Based on this evidence, we find that the goods identified in applicant's application and in registrant's registration would be encountered by the same purchasers on the same manufacturer and/or supplier websites. This overlap in trade channels supports a finding, under the third du Pont factor, that a likelihood of confusion exists.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Based on this evidence, we find that the goods identified in applicant's application and in registrant's registration would be encountered by the same purchasers on the same manufacturer and/or supplier websites. This overlap in trade channels supports a finding, under the third du Pont factor, that a likelihood of confusion exists.
  • Case Finding: MRI and ultrasound equipment are sold in the same trade channels. Also, inasmuch as physicians and other medical professionals use both types of medical imaging equipment, the same medical personnel are likely to be involved in, or actually make, purchasing decisions for both products as opposed to the purchasing agent who may merely complete the purchase order.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Regarding the factors concerning purchasers and channels of trade, the examining attorney has included internet websites showing that MRI and ultrasound equipment are sold in the same trade channels. See, e.g., www.amberusa.com (MRI and ultrasound equipment); www.medical.philips.com (Imaging – Magnetic Resonance and Ultrasound); www.absolutemed.com (Ultrasound and MRI Machines). Also, inasmuch as physicians and other medical professionals use both types of medical imaging equipment, the same medical personnel are likely to be involved in, or actually make, purchasing decisions for both products as opposed to the purchasing agent who may merely complete the purchase order. See Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992) ("[E]ven when there is an overlap in purchasing persons due to a common purchasing agent, such an agent is not necessarily a ‘relevant person' for determining likelihood of confusion"). Therefore, we conclude that the purchasers and channels of trade are likely to overlap.
  • Case Finding: Purchasers of roofing tiles and flooring tiles overlap.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • Regarding prospective purchasers, applicant's declarant maintains that the "average purchaser of roofing tile is a professional contractor or other construction professional," (Gonzalez dec. at 1), and that the customers of applicant's and registrant's goods are different. See Gabrielson dec. at 2 ("Both products are marketed towards completely different customer bases, with Capri Roofing Tiles being marketed to professionals in the roofing tile industry, and Capri Collection Floor Tiles being marketed to professionals in the floor tile industry"). While this may be true with respect to these two specific entities, there is evidence that the purchasers of roofing tiles and flooring tiles overlap. Both types of products would be marketed to architects, general contractors, building owners, and even individuals who are constructing or remodeling a home. See e.g., www.camaraslate.com ("We hope our site is helpful to the architect specifying our products [roofing slate and floor tiles], the supplier or contractor using our products, or most importantly the homeowner choosing our products"); and www.marblemaster.com ("Our product line includes travertine moldings, roof slate tiles… We offer a wide selection of Porcelain tile flooring making it a high performance choice for your home… No middlemen, no distributors, no marketing channel markups … just direct to you at tremendous savings"). Therefore, the purchasers of these goods would at least overlap.
  • Case Finding: The purchaser of deer repellant has a reasonably focused need for the product; it is a product that is not purchased by an individual consumer frquently; and a single purchsase lasts a long time.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • However, the purchaser of deer repellant has a reasonably focused need for the product. Deer repellant is an unusual product in that it is not purchased by an individual consumer on a frequent basis. A single purchase of the product should suffice for a reasonably long period of time (e.g., a season). Opposer advertises that "Just one application each season provides year round protection."30 Opposer's label states that DEER AWAY "Repels Deer Up to 3 Months."31 The directions instruct the user to "[a]pply a light dusting of powder to plants" and "[d]o not retreat new growth."
  • Case Finding: While the evidence shows that deer repellant may be inexpensive, we are not convinced that consumers will exercise a low degree of care when purchasing the product. In fact, the problem of protecting plants and shrubs from deer is significant enough to warrant numerous governmental and university studies.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • If the damage done by deer is significant enough to require action, the purchaser would not indiscriminately purchase any product purported to be a deer repellant. The product would be selected after a reasonable investigation (i.e., the consumer wants a product that will effectively solve the deer problem while not harming the plants). While the evidence shows that deer repellant may be inexpensive, we are not convinced that consumers will exercise a low degree of care when purchasing the product. In fact, the problem of protecting plants and shrubs from deer is significant enough to warrant numerous governmental and university studies.
  • Discussion of the cases of Astra Pharmaceutical and Electronic Design.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Applicant also refers to the cases of Astra Pharmaceutical and Electronic Design. However, as explained by the Electronic Design Court (21 USPQ2d at 1390-91), "Astra sold pharmaceutical products to hospital pharmacies and Beckman sold laboratory instrumentation to hospital laboratories." In reaching a conclusion similar to that in Astra Pharmaceutical, the Court held that: "Although opposer's services and applicant's goods are purchased by some of the same large corporations, the individual departments therein may be as independent in their purchasing activities as were the hospital departments in Astra. In such corporations, it cannot be presumed, as the Board apparently did, that the general computer services are selected by the same individuals who select battery chargers and power supplies." Id. at 1391.15 Here, the facts are different, with both items likely to be purchased by the same departments or diagnostic facilities with the involvement of the same physicians in the purchasing decision. FOOTNOTE 15 "Applicant also relies on the case of In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985). However, a key factor in that case was the presence of a consent agreement from the registrant, a fact not present in the instant case. Id. at 971 ("This consent, moreover, having been given by a competitor well acquainted with the realities of the business suffices to persuade us, when taken together with all of the other facts, that the board and the Examining Attorney were simply wrong in their opinions that there would be a likelihood of confusion, and we so hold")."
  • Even sophisticated buyers are not immune from source confusion where, as here, the marks are substantially identical.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • Furthermore, as our precedent dictates, even sophisticated buyers are not immune from source confusion where, as here, the marks are substantially identical. Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-949 (Fed. Cir. 2000).
  • Internet evidence may show the normal trade channels for applicant's and registrant's respective goods.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • "The Internet evidence submitted by the Trademark Examining Attorney (with her denial of the request for reconsideration) shows that the normal trade channels for applicant's and registrant's respective goods are the same and overlapping.

        For example, at www.contractorsdirect.com, pictures of an air compressor and a water pump appear next to each other on the same page. Likewise at www.csnstores.com, pictures of an air compressor and a water pump appear on the same page. Air compressors, water pumps, and/or electric motors all are offered for sale on the websites www.cascade-machinery.com, www.northerntool.com, www.dawest.com, www.havenerent.com, www.lubbockelectric.com, and www.greenvalleycompressor.com."

  • It is well settled that likelihood of confusion is determined on the basis of the goods as they are identified in the application and in the pleaded registrations.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • It is well settled that likelihood of confusion is determined on the basis of the goods as they are identified in the application and in the pleaded registrations. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
  • One must presume that at least the goods identified in the application and the registration that are legally identical move in the same channels of trade and will be sold to the same classes of consumers.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • In view of the foregoing, we must presume that at least the goods identified in the application and the registration that are legally identical move in the same channels of trade and will be sold to the same classes of consumers.
  • The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Further, applicant admits in its brief on appeal that "its disposable razor goods are in direct competition with the disposable razor goods of Opposer." Applicant goes on to argue that its goods are sold "at a substantially different price point." However, there are no restrictions or limitations in the identification of either party's goods to support applicant's contention that they are priced differently. "The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed." Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). 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.")
  • The declarations of a party's senior vice-president and its director of operations as experts finding no confusion may not be persuassive to show that there is no likelihood of confusion.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • Applicant also points out that "the declarations of two experts … have attested under oath that there is no likelihood of consumer confusion between the Cited Mark and the Applicant's mark." Brief at 6. These experts are applicant's senior vice-president and its director of operations. Request for Reconsideration, Exhibits A and B. We are not convinced that these declarations, when viewed against the entire record, show that there is no likelihood of confusion.
  • The Digirad case does not establish a per se rule that non-identical, expensive medical products are unrelated. In the present case, the record supports a conclusion that the goods are related.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • We have also considered the Digirad case but it does not compel a conclusion that confusion is unlikely. In that case, applicant sought to register the mark DIGIRAD for solid state gamma radiation sensors, signal processors, and display apparatus for use in medical isotopic tracing and medical nuclear imaging. The examining attorney refused to register the mark because of a registration for the mark DIGIRAY for an electronic digital x-ray system. In that case, the board found that purchasers "will easily distinguish between the marks DIGIRAY and DIGIRAD based upon the connotations of RAY and RAD in connection with the parties' respective goods" (Id. at 1845); that the examining attorney's registration evidence did not show "a single one includ[ing] both parties' goods identified herein" (Id. at 1844); and that there are "differences in the relevant purchasers" (Id.). The record in the present case is simply different. The TITAN part of the marks is identical and it would not signal to potential purchasers that the goods emanate from or are associated with different sources; the involved goods do, in the marketplace, originate from some of the same sources; and the purchasers (or those involved in making purchasing decisions) would overlap. Digirad does not establish a per se rule that non-identical, expensive medical products are unrelated. In the present case, the record supports a conclusion that the goods are related.
  • The opinion of an interested party respecting the ultimate conclusion involved in a proceeding would normally appear of no moment in that proceeding.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • "As the Court of Customs and Patent Appeals held: ""The opinion of an interested party respecting the ultimate conclusion involved in a proceeding would normally appear of no moment in that proceeding. Moreover, it is known at the outset. One may assume, for example, that an opposer believes confusion likely and that a defending applicant does not… Under no circumstances, may a party's opinion, earlier or current, relieve the decision maker of the burden of reaching his own ultimate conclusion on the entire record."" Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978)."
  • The third du Pont factor considers evidence pertaining to the similarity or dissimilarity of the trade channels in which the goods identified in the application and in the cited registration, respectively, are marketed.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Under the third du Pont factor, we consider evidence pertaining to the similarity or dissimilarity of the trade channels in which the goods identified in the application and in the cited registration, respectively, are marketed.
  • When identical goods are recited in an application and registration with no limitations as to their channels of trade or classes of consumers, such channels of trade and classes of consumers must be considered to be legally identical.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • As noted above, the parties' goods are identical in part and otherwise closely related, and there are no recited restrictions as to their channels of trade or classes of purchasers. When identical goods are recited in an application and registration with no limitations as to their channels of trade or classes of consumers, such channels of trade and classes of consumers must be considered to be legally identical. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) ("Given the in-part identical and inpart related nature of the parties' goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade."); and 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.").
  • Where consumers are the likely purchasers of both registrant's services and applicant's products, the target consumers of both registrant and applicant are the same.
    • In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010)
      • Regarding the channels of trade, there is nothing that prevents registrant's technical support services for troubleshooting of computer hardware and software problems from being promoted in the same channels of trade for, and to the same classes of consumers that purchase, applicant's performance optimization software. Furthermore, since computer owners are the likely purchasers of both registrant's services and applicant's products, the target consumers of both registrant and applicant are the same. Thus, and as discussed above, while it is only necessary to find a viable relation between applicant's goods and registrant's services to support a finding of likelihood of confusion, due to the essentially identical nature of the marks, in this case the identifications thereof as well as the evidence of record supports a finding that these goods and services are complementary in nature.
  • While we do not doubt that these institutional purchasing agents are for the most part sophisticated buyers, even sophisticated purchasers are not immune from confusion as to source where, as here, substantially identical marks are applied to related products.
    • In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009)
      • Therefore, the purchasers of these goods would at least overlap. While the purchasers of these products are likely to be professionals or at least somewhat careful purchasers, this would not mean there is no likelihood of confusion when the very similar marks CAPRI and CAPRI COLLECTION are used on products that have been shown to originate from a common source. In re Hester Industries, Inc., 231 USPQ 881, 883 (TTAB 1986) ("While we do not doubt that these institutional purchasing agents are for the most part sophisticated buyers, even sophisticated purchasers are not immune from confusion as to source where, as here, substantially identical marks are applied to related products"). See also In re Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999) ("[E]ven careful purchasers are not immune from source confusion").
  • With respect to the channels of trade, an opposer must prove that the services are rendered in the same type of distribution channel as encompassed by applicant's description of services.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • With respect to the channels of trade, an opposer must prove that the services are rendered in the same type of distribution channel as encompassed by applicant's description of services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) ("opposer does not have the burden to show sale of an infringing product by a specific chain of supermarkets or agents. Rather to invoke this du Pont factor, an opposer must show the sale of an infringing product in supermarkets or by agents in general").
  • Because of the differences in the channels of trade and customers for applicant's and the registrant's goods, there is virtually no opportunity for confusion to arise.
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • Because of the differences in the channels of trade and customers for applicant's and the registrant's goods, there is virtually no opportunity for confusion to arise. Accordingly, we need not consider the du Pont factor of the similarities of the marks, the only other factor discussed by applicant and the examining attorney, and presumably the only other factor that either believed to be relevant. See In re E.I. du Pont de Nemours & Co., 476 F.2d at 1362, 177 USPQ at 567 ("each [of the thirteen factors] may from case to case play a dominant role"); and Kellogg Co. v. Pack'em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (we know of no reason why, in a particular case, a single duPont factor may not be dispositive"). We find, based on the record before us, that there is no evidence of overlap between the channels of trade for and purchasers of applicant's and registrant's products. Accordingly, the examining attorney has failed to prove that applicant's mark, if used for its identified goods, is likely to cause confusion with the cited registration.
  • Thought the registrant's products can be purchased by ordinary consumers on impulse, because such purchasers would have no knowledge of the applicant's goods and mark, they would not choose the registrant's product because they had confused the source of the product with applicant.
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • Although we agree with the examining attorney (and applicant) that the registrant's products can be purchased by ordinary consumers on impulse, because such purchasers would have no knowledge of the applicant's goods and mark, they would not choose the registrant's product because they had confused the source of the product with applicant.
  • Because there are no limitations as to channels of trade or classes of purchasers in the registration, it is presumed that the registrant's trailers move in all channels of trade normal for those products, and that they are available to all classes of purchasers for the listed goods. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • Because there are no limitations as to channels of trade or classes of purchasers in the registration, it is presumed that the registrant's trailers move in all channels of trade normal for those products, and that they are available to all classes of purchasers for the listed goods. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
  • If an identification describes the goods without any limitation as to trade channels, it is presumed that the goods move in all normal channels of trade for those goods.
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • The examining attorney cites to case law standing for the principle that, if an identification describes the goods without any limitation as to trade channels, it is presumed that the goods move in all normal channels of trade for those goods. We, of course, agree with the principle, but point out that the presumption is that the goods move in all normal channels of trade for those goods.
  • Case Finding: Applicant's identification of goods is sufficient to show that its goods would be sold to manufacturers of pharmaceuticals, nutraceuticals and the like. The buyers of such goods, who would be using these ingredients for the products that they make and sell, must be assumed to be knowledgeable and careful purchasers.
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • The examining attorney also takes issue with applicant's characterization of its customers as "sophisticated purchasers," stating that applicant failed to provide any evidence about these purchasers. Again, however, applicant's identification of goods is sufficient to show that its goods would be sold to manufacturers of pharmaceuticals, nutraceuticals and the like. The buyers of such goods, who would be using these ingredients for the products that they make and sell, must be assumed to be knowledgeable and careful purchasers.
  • Case Finding: If the examining attorney wished to contend that such botanical and chemical products used in the manufacturing of finished products are purchased by the general public, it was her burden to prove this.
    • In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010)
      • The examining attorney has stated that applicant has not provided any evidence that its customers are manufacturers of medical, pharmaceutical, herbal and food products, but again, its very identification, i.e., that the goods are for the "manufacture" of nutraceuticals, pharmaceuticals, cosmetics and food, supports this limitation. If the examining attorney wished to contend that such botanical and chemical products used in the manufacturing of finished products are purchased by the general public, it was her burden to prove this.
  • Because the goods described in the application and the cited registration are identical, we must presume that the channels of trade and classes of purchasers are the same.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • Because the goods described in the application and the cited registration are 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 trade 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").
  • 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 trade channels and purchasers, these items could be offered and sold to the same classes of purchasers through the same channels of trade.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • Moreover, because we have found that trailers encompass travel trailers and fifth wheel trailers, the goods in the application and the cited registration are in part identical and 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 trade 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"). Accordingly, we must presume that these products move in the same channels of trade and are available to the same consumers.
Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010) In re Iolo Technologies, LLC, Serial No. 77399654 (TTAB 2010) In re HerbalScience Group, LLC, Serial No. 77519313 (TTAB 2010) Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009) Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009) Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc., Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009) In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009) UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009) In re G.B.I. Tile and Stone, Inc., Serial No. 77369073 (TTAB 2009) In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009) In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009) Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009) The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008) In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008) 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007) Apple Computer v.  TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007) Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007) In re Association of the United States Army, Serial No. 76578579, (TTAB 2007) In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007) Kohler Co. v. Baldwin Hardware Corporation, Cancellation No. 92041434, (TTAB 2007) L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007) Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007) The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007) Centraz Industries, Inc. v. Spartan Chemical Company, Inc., Opposition No. 91159335, (TTAB 2006) In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006) In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006) In re Homeland Vinyl Products, Inc., Serial No. 76361399, (TTAB 2006) In re Jump Designs, LLC, Serial No. 76393986, (TTAB 2006) In re Mark Thomas, Serial No. 78334625, (TTAB 2006) National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006) Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006) In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003) The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003) In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001) The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001) In re Continental Graphics Corporation, Serial No. 75/033,628, (TTAB 1999) Grand Total
In re Jump Designs LLC, 80 USPQ2d 1370 (TTAB 2006) 1
Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003) 6
Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) 2
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) 1
Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000) 1
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000) 1
In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999) 1
Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998) 1
In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994) 8
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) 1
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2 14698 (Fed. Cir. 1992) 1
Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) 2
In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) 2
Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992) 2
Kellogg Co. v. Pack-Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1889), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) 1
Octocom Services Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) 6
Saks & Co. v. Snack Food Association, 12 USPQ2d 1833 (TTAB 1989) 1
Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069 (TTAB 1989) 1
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988) 1
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) 1
In re Hester Industries, Inc., 231 USPQ 881 (TTAB 1986) 1
In re Quadram Corporation, 228 USPQ 863 (TTAB 1985) 1
In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985) 1
Morton-Norwich Products Inc. v. N. Siperstein Inc., 222 USPQ 735 (TTAB 1984) 1
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983) 2
Giant Food Inc. v. Nation's Foodservice Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983) 2
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983) 1
Toys R Us v. Lamps R Us, 219 USPQ 340 (TTAB 1983) 1
Astra Pharmaceutical Products Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786 (1st. Cir. 1983) 1
In re Elbaum, 211 USPQ 639 (TTAB 1981) 13
Tuxedo Monopoly Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981) 2
Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981) 1
Champion International Corp. v. Genova, 199 USPQ 301 (TTAB 1978) 1
Interstate Brands Corp. v. Celestial Seasonings Inc., 576 F.2d 926, 198 USPQ 151 (CCPA 1978) 1
Federated Foods Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) 1
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) 1
Paula Payne Products Co. v. Johnson Publishing Co., 177 USPQ 76 (CCPA 1973) 3
Kalart Co. v. Camera-Mart Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958) 1
Grand Total 2 1 2 5 4 2 3 1 3 2 3 2 2 3 2 1 1 1 2 3 2 1 1 4 4 1 2 4 1 2 4 1 1 1 1 1 76
No Statutes Listed

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