Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA835142
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`ESTTA Tracking number:
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`Filing date:
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`07/24/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Applicant
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`86614598
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`Druz, Regina Shmukler
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`Applied for Mark
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`FIT IN YOUR GENES
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`Correspondence
`Address
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`HAROLD L. NOVICK
`NOVICK, KIM & LEE, PLLC
`3251 Old Lee HighwaySUITE 404
`Fairfax, VA 22030
`UNITED STATES
`Email: docket@nkllaw.com, hnovick@nkllaw.com, hnovick@novick.com,
`adai@nkllaw.com, djung@nkllaw.com
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`Submission
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`Attachments
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`Filer's Name
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`Filer's email
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`Appeal Brief
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`Appeal Brief 07242017.pdf(344734 bytes )
`Exhibit 1.pdf(301378 bytes )
`Exhibit 2.pdf(291076 bytes )
`Exhibit 3.pdf(196305 bytes )
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`Harold L. Novick
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`docket@nkllaw.com, hnovick@nkllaw.com, hnovick@novick.com,
`adai@nkllaw.com
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`Signature
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`Date
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`/Harold L Novick/
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`07/24/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Application No.: 86/614,598
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`Filing Date: April 29, 2015
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`Mark: FIT IN YOUR GENES
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`In re Druz, Regina Shmukler, Applicant
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`Trademark Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`For online submission via ESTTA
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`APPEAL BRIEF
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`Applicant, Regina Shmukler Druz, respectfully appeals to the Trademark Trial & Appeal
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`Board (Board) from the Trademark Examining Attorney’s refusal of Applicant’s application for
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`Applicant’s mark, FIT IN YOUR GENES under Section 2(d) over a registered mark,
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`. The Board instituted the appeal on May 24, 2017, and allowed Applicant
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`sixty days from the date of the Order to file a brief (or by July 23, 2017, which is a Sunday).
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`Accordingly, Applicant’s appeal is timely.
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`DESCRIPTION OF THE RECORD
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`Applicant filed a Section 1(a) application, Serial Number 86/614,598, for FIT IN YOUR
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`GENES (hereinafter, Applicant’s mark) on April 29, 2015. On August 15, 2015, the Trademark
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`Examining Attorney suspended action on Applicant’s application pending disposition of a prior-
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`filed pending application for the mark
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`, which subsequently registered.
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`In the first Office Action, the Examining Attorney refused registration of Applicant’s
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`mark alleging a likelihood of confusion with
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` (hereinafter “fitgenes &
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`Design” or “cited mark” or “registered mark”). Applicant filed a timely Response on October 20,
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`2016.
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`In response to Applicant’s reply to the first Office Action, the Examining Attorney
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`disagreed, and issued a final Office Action. The Examining Attorney maintained the likelihood
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`of confusion refusal. Applicant timely filed a Notice of Appeal on May 24, 2017.
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`STATEMENT OF THE ISSUES
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`The sole contested issue in this case is whether Applicant’s mark is likely to cause
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`confusion with the cited mark.
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`RECITATION OF THE FACTS
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`Applicant’s mark FIT IN YOUR GENES is for:
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`Medical services, namely, providing a program for achieving weight loss; providing a weight
`loss program involving detox, genetically guided evaluation for optimal macronutrients and
`micronutrients balance, exercise type and duration, and supplement optimization; providing
`integrative, holistic care to patients involving genetics, environmental, nutritional, and exercise
`evaluation, and nutritional supplements for prevention and treatment of chronic conditions;
`providing medical advice to patients involving genetics, environmental, nutritional, and exercise
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`evaluation, and nutritional supplements for prevention and treatment of chronic conditions, in
`International Class 44.
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`The cited mark
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`, registration number 4843387, is for:
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`Training and education services, namely, providing live and on-line courses, classes, seminars
`and workshops in the fields of genetic profiling, health, diet, weight loss, weight control,
`nutrition, physical activity, fitness, medical conditions, general well-being and wellness, and
`dissemination of educational materials in connection therewith in printed or electronic format;
`education services, namely, providing non-downloadable webinars in the fields of genetic
`profiling, health, diet, weight loss, weight control, nutrition, physical activity, fitness, medical
`conditions, general well-being and wellness; education services, namely, providing web-based
`and classroom training for certification of practitioners and continuing education for practitioners,
`and dissemination of educational materials in connection therewith in printed or electronic
`format; arranging and conducting seminars, lectures, training workshops, educational
`conferences, educational exhibitions for training and educational purposes in the fields of genetic
`profiling, health, diet, weight loss, weight control, nutrition, physical activity, fitness, medical
`conditions, general well-being and wellness, and dissemination of educational materials in
`connection therewith in printed or electronic format; lifestyle counselling and consultancy,
`namely, training in the fields of lifestyle counselling and consulting; educational examination
`and assessment services; occupational health and safety services, namely, education and training
`services in the form of courses, classes, seminars and workshops in the field of occupational
`health and safety; physical health education, namely, classes, seminars and workshops in the
`field of physical health; providing personalised exercise and fitness programs based on a person's
`DNA profile; provision of information relating to training and education, namely, information on
`training and education opportunities. providing online, not downloadable, electronic publications
`in the fields of genetic profiling, health, diet, weight loss, weight control, nutrition, physical
`activity, fitness, medical conditions, general well-being and wellness; electronic publication of
`information on a wide range of topics, including online and over a global computer network,
`namely, publication of articles, brochures, e-books, magazines, newsletters in the fields of
`genetic profiling, health, diet, weight loss, weight control, nutrition, physical activity, fitness,
`medical conditions, general well-being and wellness; publication of educational materials,
`educational texts, books, journals, electronic books and journals online, magazines, manuals,
`videos, posters, texts other than publicity texts; online publication of journals or diaries, namely,
`weblogs in the fields of genetic profiling, health, diet, weight loss, weight control, nutrition,
`physical activity, fitness, medical conditions, general well-being and wellness, in International
`Class 41.
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` Genetic testing for medical purposes; medical advisory services relating to genetic profiling,
`health, diet, weight loss, weight control, nutrition, physical, fitness, medical conditions, general
`well-being and wellness; providing medical information including online, about genetic profiling,
`health, diet, weight loss, weight control, nutrition, physical, fitness, medical conditions, general
`well-being and wellness; providing a website featuring medical information and medical advice
`in the fields of health, diet, weight loss, nutrition, diet planning and lifestyle wellness;
`personalized dietary and weight management services, namely, providing weight loss and/or
`weight maintenance programs; personalized dietary and weight management services, namely,
`providing personalized genomics-based programs to effectively manage a patient's diet and
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`weight; health risk assessment surveys, namely, providing a series of health related questions for
`response from the user that result in a report that provides health-related information in the form
`of recommended educational resources and treatment information; medical screening; medical
`advisory services, in International Class 44.
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`ARGUMENT
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`Applicant submits that there is no likelihood of confusion with the registered mark
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`primarily because of the outweighing DuPont factors that there is no confusing similarity
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`between Applicant’s mark and the cited mark due to differences in appearance, meaning, and
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`sound of the marks. Applicant’s mark imparts a different commercial impression on the
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`purchaser’s mind than the cited mark. It has been held that these distinctions alone can be
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`dispositive of the case. See In re C. Preme Ltd., LLC, Serial No. 85316370, 2013 WL 5407250,
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`at **4, 5 (TTAB June 28, 2013) (dissimilarity of applicant’s mark and registered mark
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`dispositive in TTAB’s reversal of likelihood of confusion refusal), attached as Exhibit 11; see
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`also Kellogg Co. v. Pack’em Enterprises, Inc., 21 U.S.P.Q.2d 1142, 951 F.2d 330, 333 (Fed. Cir.
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`1991) (affirming dissimilarity of the marks was dispositive of the likelihood of confusion issue);
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`see also In re Covalinski, 113 U.S.P.Q.2d 1166, Serial No. 85685983, 2014 WL 7496055, at *4
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`(T.T.A.B. Dec. 18, 2014) (finding the first DuPont factor, the differences between the marks,
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`outweighs the other factors).
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`I. Applicant’s Mark Has a Different Appearance Than the Cited Mark.
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`Applicant’s mark is a standard character word mark having four separate words, with two
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`additional words “in” and “your” in between “fit” and “genes.”
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`On the other hand, the literal portion, “fitgenes,” of the cited mark only consists of lower-
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`case words “fit” and “genes” adjacent to each other, with no space between them. Thus, the
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`1 Though In re C. Preme is not a precedent of the TTAB, the Board’s discussion there regarding
`the dissimilarity of the marks at issue is helpful for application here.
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`appearance of the cited mark is that of a single word rather than multiple separate words of
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`Applicant’s mark.
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`More importantly, the cited mark,
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`, has a prominent design
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`element leading the mark. The design element is dubbed “two interlocking chevrons.”
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`(August 15, 2015 Suspension Letter, TSDR p. 3.)
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`The Examining Attorney alleges that the design element of the cited mark is “vague,”
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`and that people would not remember this vague design. (November 28, 2016 Office Action,
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`TSDR p. 1.) But Applicant respectfully disagrees. Even though, normally, the word portion is
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`the dominant element of a cited mark, the design element of two interlocking chevrons of the
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`cited mark here is large, distinctive, and impossible to ignore. The prominent design in the
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`cited mark immediately catches the consumer’s eye because it leads the mark, it is oversized
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`and larger than the word portion “fitgenes,” and it is distinctive. This design feature engages
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`the viewer before the viewer looks at the word “fitgenes.” This is similar to the situation in In
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`re C. Preme, where the design element of the applied-for mark leads the mark, is oversized,
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`and distinctive. See 2013 WL 5407250, at *4 (finding no likelihood of confusion between
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`cited mark SUPREME and Applicant’s mark C•PREME & Design where Board’s reasoning
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`included analysis of a distinctive and eye-catching capital C design in Applicant’s mark); see
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`also In re White Rock Distilleries Inc., 92 U.S.P.Q.2d 1282, Serial No. 77093221, 2009 WL
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`3401827, at *1 (TTAB Oct. 5, 2009) (finding the prominent design feature and the term
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`TERZA in the registered mark TERZA VOLTA & Design serve to distinguish the registered
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`mark visually from applicant’s mark VOLTA); Steve’s Ice Cream, Inc. v. Steve’s Famous
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`Hot Dogs, 3 U.S.P.Q.2d 1477, Opposition No. 70,603, 1987 WL 124289, at *2 (T.T.A.B.
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`June 23, 1987) (finding the prominent design feature of Applicant’s mark STEVE’S &
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`Design created a distinctive commercial impression over opposer’s standard word mark
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`STEVE’S).
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`These differences in the appearance of the marks and especially the prominent design
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`element of two interlocking chevrons in the registered mark create distinct, significant
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`commercial impressions in the purchaser’s mind such that this design element alone should
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`dictate no likelihood of confusion.
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`II. Applicant’s Mark Has a Different Meaning Than the Cited Mark.
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`Applicant’s mark and the cited mark have completely different meanings.
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`Applicant’s mark is for services that include a program for weight loss and is suggestive of
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`weight loss. It is also a creative play on words where “genes” replaces the same sounding
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`“jeans” for garments. Applicant’s mark thus creatively incorporates part of the services
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`provided in connection with her mark involving genetics and weight loss resulting in a mark
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`with a motivational effect.
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`The cited mark, however, does not have any such suggestive meaning or motivational
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`effect. Nor is it a play on words. In fact, “fitgenes” has no meaning in the English language.
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`Even if a purchaser dissects the mark in his/her mind and reads “fit” separately from “genes”
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`the resulting curt phrase “fit genes” still conveys a meaning different than Applicant’s mark.
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`Specifically, “fit genes” is just a straight forward statement that one’s genes are fit.
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`Accordingly, considering the word portion of the marks as a whole, Applicant’s mark
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`FIT IN YOUR GENES is a command to someone to take control of their health and well-
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`being. It is in the active, command voice. On the other hand, the cited mark is a passive term
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`and is devoid of any meaning as a single word. This difference in meaning alone imparts a
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`different commercial impression between the marks.
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`III. Applicant’s Mark Sounds Different Than the Cited Mark.
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`In addition to the differences in appearance and meaning between Applicant’s mark
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`and the cited mark, the marks also sound different.
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`Applicant’s mark sounds significantly different than the cited mark. The four separate
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`terms in Applicant’s mark FIT IN YOUR GENES read as an imperative phrase with a
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`motivational effect or tone.
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`On the other hand, the cited mark reads as a curt, descriptive statement, not a
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`command, describing one’s genes as “fit.”
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`Because of the differences in appearance, meaning, and sound between the marks,
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`Applicant’s mark FIT IN YOUR GENES imparts a completely different commercial
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`impression than fitgenes & Design. See In re C. Preme, 2013 WL 5407250, at *4 (finding
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`that even though applicant’s mark and cited registered mark both contain the letters
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`“PREME”, on balance the marks create entirely different overall commercial impressions).
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`IV. Other Relevant DuPont Factors That Also Weigh Against A Likelihood of
`Confusion.
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`There are other relevant DuPont factors that also weigh against a likelihood of
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`confusion between Applicant’s mark and the cited mark. Specifically, those other relevant
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`factors applicable here are factor 4 (“The conditions under which and buyers to whom sales
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`are made, i.e., “impulse” vs. careful, sophisticated purchasing”); factor 5 (“The fame of the
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`prior mark”); factor 6 (“The number and nature of similar marks in use on similar goods”);
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`factor 10 (“The market interface between applicant and the owner of a prior mark”); and
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`factor 12 (“The extent of potential confusion, i.e., whether de minimis or substantial”). See
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`In re E. I. DuPont de Nemours & Co., 177 U.S.P.Q. 563, 567, 476 F.2d 1357, 1361 (C.C.P.A.
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`1973).
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`A. Factor 4: The Customers Here Are Careful Purchasers
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`The customers of the services of Applicant’s mark and the cited mark are
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`healthcare practitioners and their patients. Healthcare practitioners are highly educated,
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`intelligent, and discriminating professionals. These professionals are careful purchasers
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`who would be unlikely to confuse Applicant’s standard word mark FIT IN YOUR
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`GENES with the cited mark.
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`Also, patients in general, and particularly those seeking the services of Applicant
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`and the Registrant, are very interested in maintaining or improving their health and thus
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`understandably have a high personal stake in finding an effective program to achieve that
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`goal. Therefore they are very discerning and careful in selecting the medical service
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`provider and program. Accordingly, it is quite unlikely that these patients would confuse
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`Applicant’s mark with the dominant design and word portion of the cited mark.
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`B. Factor 5: No Fame
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`It does not appear that the prior cited mark can claim any fame, and thus it does
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`not have the benefit of a large consumer base recognizing the mark.
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`C. Factor 6: The Word “Gene” Appears In A Large Number of Marks in
`Class 44
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`A quick TESS search reveals over 100 live marks in International Class (IC) 44
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`with the word “GENE” in them. (Exhibit 2.) Of these marks, nearly 70 marks are used in
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`commerce. (Exhibit 3.) Thus, the word GENE is a very common word for trademarks and
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`for marks in connection with IC 44 services. Its scope must be limited to the exact nature
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`of the services. Moreover, based on declarations filed in each case, nearly 70 GENE
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`marks are used in commerce in connection with similar services as those provided by
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`Applicant. The numerous uses of GENE marks for IC 44 services demonstrate that the
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`purchasers here (i.e., healthcare practitioners and their patients) have become conditioned
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`to recognize that many healthcare providers or programs that use genetic and genomic
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`information to treat patients use the term GENE in their trademarks. And these
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`purchasers are able to distinguish between these services based on small distinctions
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`among the marks. See Steve’s Ice Cream, 3 U.S.P.Q.2d 1477, 1987 WL 124289, at *2
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`(finding that the numerous third-party uses of “STEVE’S” “demonstrate that the
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`purchasing public has become conditioned to recognize that many businesses in the
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`restaurant and food store fields use the term, or something closely related to it, and that
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`this purchasing public is able to distinguish between these businesses based on small
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`distinctions among the marks”).
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`D. Factor 10: No Market Interface
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`There is no market interface between Applicant’s services and Registrant’s
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`services. Thus, this factor greatly limits the possibility of a likelihood of confusion
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`between Applicant’s mark and the cited mark.
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`E. Factor 12: Likelihood of Confusion is De Minimis
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`For the reasons discussed above, there is very small likelihood of confusion
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`between Applicant’s mark and the cited mark.
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`SUMMARY
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`In view of the foregoing, there is no likelihood of confusion between Applicant’s mark
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`FIT IN YOUR GENES and cited mark
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`, and it is respectfully requested
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`that the Section 2(d) refusal be withdrawn, and that Applicant’s trademark application be
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`remanded for allowance and publication.
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`Date: July 24, 2017
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`Respectfully submitted,
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`/Harold L Novick/
`Harold L. Novick
`Angela Y. Dai
`NOVICK, KIM & LEE, PLLC
`3251 Old Lee Highway
`Suite 404
`Fairfax, VA 22030
`Telephone: (703) 546-8554
`Facsimile: (703) 563-9748
`Email: hnovick@nkllaw.com
`Email: adai@nkllaw.com
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`Attorneys for Applicant Druz, Regina Shmukler
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`EXHIBIT 1
`EXHIBIT 1
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`In re C. Preme Limited, LLC, 2013 WL 5407250 (2013)
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`2013 WL 5407250 (Trademark Tr. & App. Bd.)
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`THIS OPINION IS NOT A PRECEDENT OF THE TTAB
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`Trademark Trial and Appeal Board
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`Patent and Trademark Office (P.T.O.)
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`IN RE C. PREME LIMITED, LLC
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`Serial No. 85316370
`June 28, 2013
`*1 William J. Seiter of Seiter & Co. for C. Preme Limited, LLC
`Kristina Morris
`Trademark Examining Attorney
`Law Office 116
`(Michael W. Baird, Managing Attorney)
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`Before Holtzman, Mermelstein and Adlin
`Administrative Trademark Judges
`Opinion by Adlin
`Administrative Trademark Judge:
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`C. Preme Limited, LLC (“applicant”) seeks registration of the mark shown below
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` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
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`1
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`In re C. Preme Limited, LLC, 2013 WL 5407250 (2013)
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`for, inter alia, bicycles and structural and other parts for bicycles.1 The application includes the following description of the
`mark: “The mark consists of a stylized grinning circular head in right profile showing large teeth represented by eight squares
`inside an open smiling mouth, with a five-pointed crown atop the head at a slight angle. Below the head appears the letter ‘C’
`and the term ‘PREME’ in stylized capital letters separated by a dot.”
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`The examining attorney refused registration of the mark under Section 2(d) of the Act, on the ground that applicants’ mark,
`when used in connection with applicant’s goods, so resembles the previously-registered mark SUPREME, in typed format,
`for “bicycles and structural parts therefor”2 as to be likely to cause confusion. The examining attorney also refused
`registration in the absence of a disclaimer of C•PREME, finding that element of the mark to be “a creative misspelling of the
`word SUPREME,” and that “the wording must appear in its correct spelling in the disclaimer, i.e. SUPREME.”
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`After the refusals were made final, applicant appealed, and its request for reconsideration was denied. Applicant and the
`examining attorney filed briefs. We reverse both refusals to register.
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` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
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`2
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`In re C. Preme Limited, LLC, 2013 WL 5407250 (2013)
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`Likelihood of Confusion
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`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 USPQ 563, 567
`(CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In
`any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities
`between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 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.”). We discuss each of the du Pont factors concerning which
`applicant or the examining attorney submitted argument or evidence. To the extent that any other du Pont factors for which
`no evidence or argument was presented may nonetheless be applicable, we treat them as neutral.
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`*2 Applicant’s goods include “bicycles” and “structural parts of bicycles,” and registrant’s goods are “bicycles and structural
`parts therefor.” The goods are therefore identical. Furthermore, because the goods are identical, and neither applicant’s nor
`registrant’s identification of goods includes any limitation with respect to consumers or channels of trade, we presume that
`the goods move in the same channels of trade and are sold to the same classes of consumers. See American Lebanese Syrian
`Associated Charities, Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); 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.”); In re Elbaum, 211 USPQ 639, 640 (TTAB
`1981); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
`evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in
`determining likelihood of confusion). These factors both weigh in favor of a finding of likelihood of confusion.
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`As for the marks, we must compare them “in their entireties as to appearance, sound, connotation and commercial
`impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
`1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is, we may not dissect the marks into their various
`components. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v.
`Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). The test is not whether the marks can be distinguished
`when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall
`commercial impression so that confusion as to the source of the goods and services offered under the respective marks is
`likely to result. San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
`1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991). The focus is on the recollection of the
`average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v.
`Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
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`*3 Of course, one feature of a mark may be more significant than another, and it is not improper to give more weight to the
`dominant feature of a mark in determining its commercial impression. In re Nat’l Data Corp., 224 USPQ at 751 (“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. Indeed, this type of analysis appears
`to be unavoidable.”); Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955).
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`Here, the examining attorney contends that the literal component of applicant’s mark, C•PREME, “is the dominant portion
`because consumers will refer to applicant’s goods using this portion of the mark.” Examining Attorney’s Brief at 9. The
`examining attorney also argues that applicant’s mark and the cited mark are “phonetic equivalents,” in that applicant’s mark
`“could reasonably be pronounced ‘seh-preme,’ the equivalent of ‘supreme,”’ and even if applicant’s mark is pronounced
`“see-preme” the marks would still sound quite similar. Id. at 9-10. Finally, the examining attorney points out that C• PREME
`is not found in the dictionary, Office Action of May 1, 2012, and argues that it is merely a “creative spelling” of the word
`SUPREME.
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`We do not disagree that C•PREME is the dominant element of applicant’s mark, because it would be used by purchasers to
`request the goods. M.C.I. Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010); see also, CBS, Inc. v. Morrow,
`708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). Nevertheless, we disagree that this literal element, which is not an
`actual word, is sufficiently similar to the actual word “supreme” for confusion to result. In fact, there is no evidence that there
`are any words in the English language which include an individual letter separated from the rest of the word by a symbol
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` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
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`In re C. Preme Limited, LLC, 2013 WL 5407250 (2013)
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`such as applicant’s “dot” or “•.” More importantly, there is no similarity whatsoever between the first two characters of the
`respective marks, “SU” and “C•,” and the mere fact that registrant’s mark and the literal portion of applicant’s mark end in
`PREME, which is not itself an English-language word, is not enough for the marks to create similar overall commercial
`impressions. Furthermore, the dictionary definitions reveal that the cited mark means “of the highest quality, degree,” making
`it laudatory and therefore weak and not entitled to a broad scope of protection. 3 Palm Bay Imports, 396 F.3d at 1369, 73
`USPQ2d at 1692; Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1341 (TTAB 2006). In short, C•PREME and
`SUPREME look different because one appears to be a word and the other does not, sound different because there is not a
`long or short “u” sound in the literal portion of applicant’s mark4 and convey different meanings because SUPREME has
`commonly-understood meanings while C•PREME does not mean anything.
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`*4 Furthermore, while we accept that C•PREME is the dominant element of applicant’s mark, the design element of that
`mark is large (and larger than the literal element), distinctive and impossible to ignore, even if we were permitted to do so,
`which we are not. There is nothing about the design which calls to mind or suggests the word SUPREME. To the contrary,
`the “grinning circular head” appears similar to the letter “C,” the first portion of the literal element of applicant’s mark, which
`is entirely absent from the cited mark.
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`We have not ignored that both marks include the letters “PREME,” but on balance find that the parties’ marks create entirely
`different overall commercial impressions. This factor therefore weighs against a finding of likelihood of confusion.
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`Weighing the factors about which there is evidence or argument together, we find that the dissimilarity of the marks is
`dispositive, and outweighs the fact that the goods and channels of trade are identical. Kellogg Co. v. Pack’em Enterprises Inc.,
`951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). Use of applicant’s mark for applicant’s goods is not likely to cause
`source confusion.
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`Disclaimer Requirement
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`Under Section 6(a) of the Act, “[t]he Director may require the applicant to disclaim an unregistrable component of a mark
`otherwise registrable,” such as a component which is merely descriptive under Section 2(e)(1). Failure to comply with a
`disclaimer requirement is a ground upon which registration may be refused. See In re Slokevage, 441 F.3d 957, 78 USPQ2d
`1395, 1399-1400 (Fed. Cir. 2006); In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
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` mark is deemed to be merely descriptive within the meaning of Section 2(e)(1) if it forthwith conveys an immediate idea of
`an ingredient, quality, characteristic, feature, function, purpose or use of the goods. In re Bayer Aktiengesellschaft, 488 F.3d
`960, 82 USPQ2d 1828 (Fed. Cir. 2007); and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
`A mark need not immediately convey an idea of each and every specific feature of the applicant’s goods in order to be
`considered merely descriptive; rather, it is sufficient that the mark describes one significant attribute, function or property of
`the goods. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
`Whether a mark is merely descriptive is determined not in the abstract, but in relation to the goods or services for which
`registration is sought, the context in which it is being used on or in connection with the goods, and the possible significance
`that the mark would have to the average purchaser of the goods because of the manner of its use. In re Bright-Crest, Ltd., 204
`USPQ 591, 593 (TTAB 1979). It is settled that “[t]he question is not whether someone presented with only the mark could
`guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will
`understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
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`*5 Here, the examining attorney’s disclaimer requirement is based on the finding that C•PREME is an intentional misspelling
`of the laudatory and therefore descriptive word SUPREME. As explained in connection with the likelihood of confusion
`refusal, we disagree that C•PREME will be perceived as a misspelling of SUPREME. Unlike the cited mark, applicant’s
`mark does not appear to be wording at all, because the initial “C” stands alone and is separated from PREME (which is also
`not a word) by the character “•,” which is not standard English punctuation. And to the extent that it is perceived as wording,
`applicant’s mark comprises the mere initial “C” separated by a nonstandard character from the term PREME, and the term
`PREME is not sufficient, by itself, to call to mind the word SUPREME, because the initial ““C” is so different, in almost
`every way, including how it looks and sounds, from the initial syllable of the cited mark “SU.” In short, because we do
`believe that C•PREME is a misspelling of or calls to mind SUPREME, or is otherwise descriptive of anything, a disclaimer is
`not necessary or appropriate.
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