Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1105587
`
`Filing date:
`
`01/04/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`86897073
`
`Janky Clown Productions, LLC
`
`Applied for Mark
`
`HIGH MAINTENANCE
`
`Correspondence
`Address
`
`MARK A. WATKINS
`VORYS, SATER, SEYMOUR AND PEASE LLP
`P.O. BOX 2255
`IPLAW@VORYS.COM
`COLUMBUS, OH 43216-2255
`UNITED STATES
`Primary Email: iplaw@vorys.com
`Secondary Email(s): bjjustice@vorys.com
`330.208.1000
`
`Submission
`
`Attachments
`
`Appeal Brief
`
`HIGH MAINTENANCE Appeal Brief.pdf(516871 bytes )
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`Appealed classes Class 009. First Use: 2012/11/09 First Use In Commerce: 2012/11/09
`All goods and services in the class are appealed, namely: pre-recorded DVDs,
`CDs, and high-definition DVDs, downloadable podcasts, audio recordings, video
`recordings, audiovisual recordings and sound recordings featuring television
`programming; video game software and discs; bike helmets, sound making
`devices for use on bicycles, weighing scales, carrying cases for mobile devices
`and eyewear; protective covers formobile devices, headphones
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are appealed, namely: Clothing, namely,
`shirts, t-shirts, pants, coats, socks, jackets, vests, sleepwear, underwear, sweat-
`pants, sweatshirts,shorts, scarves, ties, belts, headwear,gloves, and footwear
`
`Class 034. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are appealed, namely: Tobacco and tobacco
`substitutes; Smokers' articles, namely, ashtrays, lighters,clips for securing hand
`rolled cigarettes, rolling trays, rolling papers, tobacco pipes, tobacco water
`pipes, tobacco pipe cleaners, tobacco pouches, tobacco jars of precious metal,
`storage cases andcontainers, grinders, lighters for smokers; electronic smoking
`pipes, smokelesscigar and cigarette vaporizer pipes, oral vaporizers for smoking
`purposes, smokers' oral vaporizer refill cartridges sold empty and filled with
`flavored liquids, and flavorings, other than essential oils, for tobacco
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Mark A. Watkins
`
`iplaw@vorys.com, bjjustice@vorys.com
`
`/Mark A. Watkins/
`
`01/04/2021
`
`

`

`Application Serial No. [86897073]
`Attorney Docket No.: 072991-0004
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`86897073
`
`
`
`Application Serial No.:
`
`For the Mark
`
`Filing Date:
`
`Applicant:
`
`Examining Attorney:
`
`
`
`
`ATTN: TTAB
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`HIGH MAINTENANCE
`
`February 4, 2016
`
`
`
`
`
`Janky Clown Productions, LLC
`
`Lyndsey Kuykendall Crawford, Esq
`Law Office 124
`
`
`
`
`APPLICANT’S EX PARTE APPEAL BRIEF
`
`
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`1
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`Appeal Brief
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`

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`Application Serial No. [86897073]
`Attorney Docket No.: 072991-0004
`
`
`TABLE OF CONTENTS
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`
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`
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`I. TABLE OF AUTHORITIES ............................................................................ 3
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`II.
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`INTRODUCTION ..................................................................................... 3
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`III. PROSECUTION HISTORY ......................................................................... 4
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`IV. SUMMARY OF EVIDENCE ......................................................................... 6
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`V.
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`ARGUMENT ........................................................................................... 7
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`A. The terms HIGH MAINTENANCE and HIGH MAINTENANCE CAMO and Design
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`Give Different Commercial Impressions..................................................... 7
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`B. The Entirety of Registrant’s Mark Must be Considered. ............................. 8
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`C. The Design Elements of the Respective Marks Must be Given Adequate
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`Consideration in the Creation of the Overall Commercial Impression. ............ 9
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`VI. CONCLUSION ...................................................................................... 10
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`2
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`Appeal Brief
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`

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`Application Serial No. [86897073]
`Attorney Docket No.: 072991-0004
`
`
`I.
`
`TABLE OF AUTHORITIES
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`Cases
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`Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538 (1920) ..... 8
`
`In re Electrolyte Labs. Inc., 929 F.2d 645, 647, 16 USPQ2d 1239, 1240 (Fed. Cir.
`1990) ........................................................................................................ 9
`
`
`In re National Data Corporation, 224 USPQ 749 (CAFC 1985) .............................. 8
`
`Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012 (TTAB 2007) ........................ 9
`
`Pocket Books, Inc. v. Dell Publishing Co., 49 Misc. 2d 596, 268 N.Y.S. 2d 46, 149
`USPQ 466 (1966) ...................................................................................... 11
`
`
`Spice Islands, Inc. v. The Frank Tea and Spice Company, 184 USPQ 35 (CCPA
`1974) ........................................................................................................ 8
`
`
`Steve's Ice Cream, Inc. v. Steve's Famous Hot Dogs, 3 U.S.P.Q.2D 1477, 1478
`(TTAB 1987)............................................................................................. 10
`
`
`
`Other Authorities
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`J. McCarthy, McCarthy on Trademarks and Unfair Competition, §23.94 (4th Ed.) . 10
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`
`
`
`II.
`
`INTRODUCTION
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`
`
`
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`Pursuant to the Notice of Appeal filed with the Trademark Trial and Appeal
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`Filed November 5, 2020, Applicant hereby appeals from the Examining Attorney’s
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`May 5, 2020 final refusal to register the captioned mark on the Principal Register,
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`and respectfully requests the Trademark Trial and Appeal Board reverse the
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`Examining Attorney’s decision on the grounds that Applicant’s mark does not create
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`a likelihood of confusion with the mark cited by the Examining Attorney.
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`3
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`Appeal Brief
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`

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`Application Serial No. [86897073]
`Attorney Docket No.: 072991-0004
`
`
`III. PROSECUTION HISTORY
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`
`
`Applicant filed an application to register the mark HIGH MAINTENANCE in
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`standard characters on February 4, 2016 in connection with:
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`pre-recorded DVDs, CDs, and high-definition DVDs, downloadable
`podcasts, audio recordings, video recordings, audiovisual recordings
`and sound recordings featuring television programming; video game
`software and discs; bike helmets, sound making devices for use on
`bicycles, weighing scales, carrying cases for mobile devices and
`eyewear; protective covers for mobile devices, headphones in Class 9;
`
`clothing, namely, shirts, t-shirts, pants, coats, socks, jackets, vests,
`sleepwear, underwear, sweatpants, sweatshirts, shorts, scarves, ties,
`belts, headwear, gloves, and footwear, in Class 25; and
`
`tobacco and tobacco substitutes; Smokers' articles, namely, ashtrays,
`lighters, clips for securing hand rolled cigarettes, rolling trays, rolling
`papers, tobacco pipes, tobacco water pipes, tobacco pipe cleaners,
`tobacco pouches, tobacco jars of precious metal, storage cases and
`containers, grinders, lighters for smokers; electronic smoking pipes,
`smokeless cigar and cigarette vaporizer pipes, oral vaporizers for
`smoking purposes, smokers' oral vaporizer refill cartridges sold empty
`and filled with flavored liquids, and flavorings, other than essential oils,
`for tobacco, in Class 34.
`
`
`
`On May 23, 2016 the Examining Attorney issued a Non-Final Office Action (“the
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`First Office Action”) refusing registration based on Section 2(d) – Likelihood of
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`Confusion with U.S. Registration No. 4866526. The Examining Attorney also noted
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`several Prior Pending Applications and required an Amendment to the Identification
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`of Goods.
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`Applicant filed a response (“the First OAR”) on November 21, 2016 in which
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`Applicant offered arguments against the refusal and amended the listing of goods
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`and services in classes 9 and 34.
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`On December 20, 2016 the Examining Attorney suspended the Application
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`based on the pendency of three prior filed applications, Application Serial No(s).
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`4
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`Appeal Brief
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`

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`Application Serial No. [86897073]
`Attorney Docket No.: 072991-0004
`
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`86725711, 86897081, and 86967087. The Examining Attorney maintained the
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`2(d) refusal and indefiniteness refusal regarding the listing of goods and services.
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`On March 12, 2019 the Examining Attorney issued another Non-Final Office
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`Action (“the Second Office Action”), noting that Application Serial Nos. 86725711
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`and 86967087 were abandoned and that Serial No. 86897081 matured to
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`registration. The Examining Attorney refused registration of Applicant’s mark
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`based on a likelihood of confusion with U.S. Registration Nos. 4866526 and
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`5089676.
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`Applicant filed a response (“the Second OAR”) on September 12, 2019 in which
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`Applicant offered arguments against the refusal and amended the listing of goods
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`and services in Class 25.
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`On October 10, 2019 the Examining Attorney issued another Non-Final
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`Office Action (“the Third Office Action”), wherein the Examining Attorney indicated
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`the indefiniteness issue has been satisfied and withdrew the Section 2(d) refusal
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`based on U.S. Registration No. 5089676. The Examining Attorney maintained the
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`refusal of based on a likelihood of confusion with U.S. Registration No. 4866526.
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`Applicant filed a response (“the Third OAR”) on April 10, 2020 in which
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`Applicant offered arguments against the refusal.
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`On May 5, 2020 the Examining Attorney issued a Final Office Action, (“the
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`Final Office Action”) wherein the Examining Attorney made final the refusal to
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`register based on a likelihood of confusion with U.S. Registration No. 4866526.
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`Applicant filed a Notice of Appeal on November 5, 2020.
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`5
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`Appeal Brief
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`

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`Application Serial No. [86897073]
`Attorney Docket No.: 072991-0004
`
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`IV. SUMMARY OF EVIDENCE
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` The Second Office Action
`
`
`o Internet Evidence of websites from 6 companies
` CBS
` Phone case: https://www.cbsstore.com/product/
`Z1AMCBS672/scorpion-circle-iphone6-case?cp=null
` DVD: https://www.cbsstore.com/product/
`Z1AMCBS1687/scorpion-season-1-dvd-ultraviolet?cp=null
` TV shows: https://www.cbs.com/shows/scorpion/
` FOX
` Phone case: https://shop.fox.com/products/bobs-
`burgers-teddy-phone-case
` DVD: https://www.barnesandnoble.com/w/dvd-bobs-
`burgers-the-complete-1st-season/23922476
` TV shows: https://www.fox.com/bobs-burgers/
` HBO
` Phone case: https://shop.hbo.com/products/game-of-
`thrones-house-stark-phone-case
` DVD: https://shop.hbo.com/collections/blu-ray-and-
`dvds/products/game-of-thrones-the-complete-seventh-
`season-dvd
` TV shows: https://www.hbo.com/game-of-thrones
` NBC
` Phone case: https://www.nbcstore.com/shop-by-
`show/brooklyn-nine-nine/brooklyn-nine-nine-logo-tough-
`phone-case.html
` DVD: https://www.nbcstore.com/shop-by-show/brooklyn-
`nine-nine/brooklyn-nine-nine-season-1-dvd.html
` TV shows: https://www.nbc.com/brooklyn-nine-nine
` PBS
` DVD: https://shop.pbs.org/mister-rogers-neighborhood-
`its-a-beautiful-day-collection-dvd/product/MSTR620
` TV shows: https://www.pbs.org/show/frankie-drake-
`mysteries/
` Warner Brothers
` Phone case: https://www.wbshop.com/products/
`supernatural-dean-sam-and-castiel-phone-case-for-
`iphone-and-galaxy
` DVD: https://www.wbshop.com/collections/
`supernatural/products/supernatural-the-complete-
`thirteenth-season-dvd
` TV shows: https://www.cwtv.com/shows/supernatural
`
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`6
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`Appeal Brief
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`

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`Application Serial No. [86897073]
`Attorney Docket No.: 072991-0004
`
`
`V.
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`ARGUMENT
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`The Examining Attorney has identified US Registration No. 4,866,526 (“the
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`Cited Mark”) as a basis of refusal of Applicant’s present application. Applicant believes
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`an analysis into the differences in sight, sound and commercial impression finds that
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`there is no likelihood of confusion between the Cited Mark and Applicant’s Mark.
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`The purpose of the likelihood of confusion standard is to protect consumers
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`from mistakenly believing that an applicant’s goods or services emanate from the
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`cited registrant, or are related to the registrant’s business. Applicant hereby submits
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`that the Examining Attorney erred by focusing solely on the marks’ similarities rather
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`than giving appropriate weight to the dissimilarities in appearance and overall
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`commercial impression.
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`
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`A. The terms HIGH MAINTENANCE and HIGH MAINTENANCE CAMO
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`and Design Give Different Commercial Impressions.
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`The Cited Mark is a composite mark consisting of words + the photo of a deer.
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`Inclusion of the word “camo” together with a deer illustration serves to clearly
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`associate the Cited Mark with hunting or with “camouflage” related articles. Further,
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`the registration for the Cited Mark claims colors brown, white, black and pink as
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`features of the mark. Given these required features of the mark embodied in the
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`Registration of the Cited Mark, the registrant is clearly targeting a particular segment
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`of the population and the related goods will be traveling in a restricted channel of
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`trade (i.e. hunting enthusiasts, etc.).
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`In contrast, Applicant’s mark makes no association to animal hunting or
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`camouflage, and no association can be inferred from the presentation of Applicant’s
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`7
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`Application Serial No. [86897073]
`Attorney Docket No.: 072991-0004
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`mark. Thus, the Cited Mark and the mark of the present application are vastly
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`different in appearance, meaning and sound thus each creating a distinct commercial
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`impression.
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`Undeniably, reference to the word “CAMO” is almost exclusively associated
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`with military or hunting applications. Use of a deer illustration, together with the word
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`“CAMO” limits Registrant’s target consumers exclusively to hunting. Still further,
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`Registrant’s use of the color pink and a pink bow on the head of an antlerless deer
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`clearly suggests that the target consumer is very specifically only female hunting
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`enthusiasts. No such association or inference is made by Applicant.
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`
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`B. The Entirety of Registrant’s Mark Must be Considered.
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`
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`It has long been the law that allegedly conflicting marks are to be compared
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`by looking at them as a whole, rather than breaking them up into their component
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`parts for comparison. The United States Supreme Court has stated that “the
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`commercial impression of a mark is derived from it as a whole, not from its elements
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`separated and considered in detail.” Estate of P.D. Beckwith, Inc. v. Commissioner of
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`Patents, 252 U.S. 538 (1920). “The marks must be viewed as the public views them.
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`That is, in their entireties.” In re National Data Corporation, 224 USPQ 749 (CAFC
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`1985). Further, it is a violation of this anti-dissection rule to focus on one 3 feature
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`of a mark, and find a likelihood of confusion based solely on that feature, ignoring
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`the other elements of the mark. See Spice Islands, Inc. v. The Frank Tea and Spice
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`Company, 184 USPQ 35 (CCPA 1974). “Arguments to the effect that one portion of a
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`mark possess no trademark significance leading to a discrete comparison between
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`8
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`Appeal Brief
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`

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`Application Serial No. [86897073]
`Attorney Docket No.: 072991-0004
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`only what remains is an erroneous approach.” Id. Accordingly, the Trademark
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`Examining Attorney must take into consideration all elements of the Applicant’s Mark
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`and the Cited Registration, including all of the additional words, the stylistic
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`presentation of these words and the design elements contained in the Cited
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`Registration, in determining any possible likelihood of confusion. In this case, it would
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`be improper to ignore the word “CAMO”, the deer illustration and the requirement of
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`color as a part of the Registrant’s mark, and not consider them as an integral part of
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`Registrant’s mark. It is not within the Office’s authority to opine on what it thinks the
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`Registrant should have claimed as its mark, or to rewrite the scope of Registrant’s
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`registration.
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`
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`C. The Design Elements of the Respective Marks Must be Given
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`Adequate Consideration in the Creation of the Overall Commercial
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`Impression.
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`Word portions alone do not make marks highly similar in appearance, sound,
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`connotation, and commercial impression. The Trademark Examining Attorney is
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`currently discounting the distinctive and predominant nature of the design element
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`in this case by asserting that a mere subset of the entire word portion of a mark is
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`more likely to be the dominant feature. While one portion of a mark may be more
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`dominant, “[t]here is no general rule as to whether letters or designs will dominate
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`in composite marks.” In re Electrolyte Labs. Inc., 929 F.2d 645, 647, 16 USPQ2d
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`1239, 1240 (Fed. Cir. 1990). There have been many cases in which the word portions
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`of the relevant marks not only shared a common theme, but rather were identical or
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`virtually identical, yet the marks gave a different commercial impression due to the
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`9
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`Appeal Brief
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`

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`Application Serial No. [86897073]
`Attorney Docket No.: 072991-0004
`
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`dominance of a design element. For example, in Parfums de Coeur Ltd. v. Lazarus,
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`the Board found that in comparing the word mark BOD MAN with a mark consisting
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`of a depiction of a superhero torso above the word BODYMAN, the design element
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`was the dominant element of the mark because the design was “prominently 4
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`displayed, being the largest element in the mark, and at the top of the mark.” 83
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`USPQ2d 1012 (TTAB 2007). Parfums de Coeur Ltd. stated that the design catches
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`the eye and engages the viewer before the viewer looks at the word “Bodyman.” Id.
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`at 1016.
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`Furthermore, in Steve's Ice Cream, Inc. v. Steve's Famous Hot Dogs,
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`applicant’s mark was the term STEVE’S above an image two “humanized frankfurters,
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`prancing arm in arm to musical notes” whereas the opposer’s mark was the identical
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`word mark STEVE’S. 3 U.S.P.Q.2D 1477, 1478 (TTAB 1987). Despite the word
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`portions being identical, the addition of the design created “a distinctive commercial
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`impression.” Id. at 1479. These cases are similar to the situation at hand in which
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`the Cited Registration shows the stylized and colored words “High Maintenance
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`Camo” positioned above an illustration of an antlerless deer having a pink bow on its
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`head.
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`
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`VI. CONCLUSION
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`Applicant is convinced that its HIGH MAINTENANCE mark is entitled to
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`registration on the Principal Register. Again, simply because the marks share the
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`terms HIGH MAINTENANCE does not mean that the relevant consumers will be likely
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`to be confused as to the source of the relevant goods. The ordinary buyer may be
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`guided by general impressions; however, the courts have held that there has to be a
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`10
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`Appeal Brief
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`

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`Application Serial No. [86897073]
`Attorney Docket No.: 072991-0004
`
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`"lower limit on the carelessness or indifference of the reasonable buyer." J. McCarthy,
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`McCarthy on Trademarks and Unfair Competition, §23.94 (4th Ed.). As the court in
`
`Pocket Books, Inc. v. Dell Publishing Co., 49 Misc. 2d 596, 268 N.Y.S. 2d 46, 149
`
`USPQ 466 (1966) held, "there simply must be some limits to the claimed asininity of
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`the buying public." Again, the test is likelihood of confusion, not a “mere possibility
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`of confusion.” Applicant believes that there simply is no real likelihood of confusion
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`between the marks and respectfully requests withdrawal of the Section 2(d) refusal.
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`
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`Applicant believes that no additional fees are due with the filing of this Appeal Brief,
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`as the Notice of Appeal Fee was paid with the filing of the Pre-Appeal Request.
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`However, the Commissioner is authorized to debit the Deposit Account of Vorys,
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`Sater, Seymour & Pease LLP, Deposit Account No. 220585, in the event the
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`Commissioner deems any fees are due.
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`11
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`Appeal Brief
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