Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1267586
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`Filing date:
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`02/22/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91268333
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Plaintiff
`Simple Design Ltd.
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`NAZLY AILEEN BAYRAMOGLU
`BAYRAMOGLU LAW OFFICES LLC
`1540 WEST WARM SPRINGS RD STE 100
`HENDERSON, NV 89014
`UNITED STATES
`Primary email: tm@bayramoglu-legal.com
`Secondary email(s): nazly@bayramoglu-legal.com, den-
`iz@bayramoglu-legal.com, david@bayramoglu-legal.com
`702-462-5973
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`Request for Reconsideration of Final Board Decision
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`David Silver
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`tm@bayramoglu-legal.com, nazly@bayramoglu-legal.com, den-
`iz@bayramoglu-legal.com, david@bayramoglu-legal.com,
`gokalp@bayramoglu-legal.com
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`Signature
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`Date
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`/David Silver/
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`02/22/2023
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`Attachments
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`20230222 Motion for Reconsideration of 91268333.pdf(230554 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Simple Design Ltd.,
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`Opposer,
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`vs.
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`Cucufish Tech Co., Limited,
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`Applicant.
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`Opposition Proceeding No.: 91268333
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`Application No.: 90091938
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`OPPOSER’S MOTION FOR RECONSIDERATION OF FINAL JUDGMENT
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`COMES NOW Opposer, Simple Design Ltd. (“Opposer” or “Simple Design”), by and
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`through its counsel Bayramoglu Law Offices LLC, hereby submits its Motion for Reconsideration
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`of the Board’s final decision (14 TTABVUE) pursuant to 37 C.F.R. § 2.129(c) and TBMP §§ 518,
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`543.
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`PROCEDURAL HISTORY
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`Opposer initiated the present Opposition proceeding (the “Opposition”) on March 23,
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`2021. See 1 TTABVUE. Applicant Cucufish Tech Co., Limited (“Applicant” or “Cucufish”) filed
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`an answer on May 1, 2021. See 4 TTABVUE. Opposer submitted its trial testimony on February
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`25, 2022. See 5-6 TTABVUE. Applicant submitted its trial testimony on April 27, 2022. See 7
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`TTABVUE. Opposer submitted rebuttal testimony on June 9, 2022. See 8 TTABVUE. Opposer
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`submitted its trial brief on August 8, 2022. See 9 TTABVUE. Applicant submitted its trial brief on
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`September 9, 2022. See 10 TTABVUE. Opposer filed a rebuttal trial brief on September 21, 2022.
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`See 11 TTABVUE. The Board issued a ruling dismissing the Opposition on January 27, 2023. See
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`1
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`14 TTABVUE. For the reasons stated herein, Opposer is requesting the Board reconsider its final
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`decision based on Opposer’s belief that applicable law was not properly applied in this case and
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`prevented a full decision on the merits.
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`LEGAL STANDARD
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`“The filing of a request for rehearing, reconsideration, or modification of a decision issued
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`after final hearing is governed by 37 C.F.R. § 2.129(c).” TBMP § 543. “Any request for rehearing
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`or reconsideration or modification of a decision issued after final hearing must be filed within one
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`month from the date of the decision.” 37 C.F.R. § 2.129(c); TBMP §§ 518, 543. As the final
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`decision was January 27, 2023, the filing of the present Motion for Reconsideration falls within
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`the one month time period and is therefore timely.
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`“If a request for rehearing, reconsideration, or modification of a decision after final hearing
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`is timely filed, the time for filing an appeal, or for commencing a civil action for review of the
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`Board’s decision, will expire sixty-three (63) days after action on the request.” TBMP § 543;
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`TBMP §§ 902.02, 903.04. Therefore, Opposer requests the Board suspend the time for the filing
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`of an appeal or civil action until after decision on the present motion.
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`A motion for reconsideration is generally based on the evidence of record and applicable
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`law and may not be used to introduce additional evidence nor should it simply reargue the points
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`in the moving party’s trial brief. See TBMP § 543. The request “should be limited to a
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`demonstration that, based on the evidence properly of record and the applicable law, the Board’s
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`ruling is in error and requires appropriate change.” TBMP § 543. As explained herein, Opposer
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`contends the Board failed to probably join or substitute Hangzhou InShot Tech Co., Ltd. (“InShot”)
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`as a plaintiff in this matter, misapplied the definition of the term “and/or” and thus did not give
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`Opposer’s testimony the weight it deserved, and did not give proper consideration to case law cited
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`2
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`in Opposer’s brief when conducting the likelihood of confusion analysis. Opposer believes these
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`errors led to an incomplete and erroneous decision that Opposer is requesting the Board now
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`reconsider.
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`ARGUMENT
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`a. Joinder or Substitution of Hangzhou InShot Tech Co., Ltd. as Party-Plaintiff
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`In making its final decision, the Board ruled that while Opposer had entitlement to a
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`statutory cause of action to bring the Opposition, Opposer could not rely on the priority dates in
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`the trademark registrations cited by Opposer as the trademarks were previously assigned to InShot.
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`The Board cited to the cases Illyrian Imp., Inc. v. ADOL Sh.p.k., 2022 USPQ2d 292 (TTAB
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`2022) and Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028 (TTAB 2017) regarding a
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`licensee’s inability to use the priority dates of the owner of the mark. 14 TTABVUE 16. However,
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`the Board also ruled that Opposer had entitlement to a statutory cause of action due to Opposer’s
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`prior ownership of two of the pleaded marks, license to use the marks, and authorization to enforce
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`the marks demonstrated a real interest in this proceeding and a reasonable belief in being damaged
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`by the registration of Application No. 90091938 (“Applicant’s Mark”). 14 TTABVUE 14.
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`Due to Simple Design’s prior ownership rights and the direct authorization to enforce the
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`marks on behalf of InShot, Simple Design filed the original extension of time to oppose
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`Applicant’s Mark. As Simple Design was the party that filed the original extension of time to
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`oppose Applicant’s Mark, Simple Design is the plaintiff in the Opposition. Regardless of the
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`plaintiff identification, the interests of Simple Design and InShot are directly aligned in this matter
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`and the underlying registrations and facts would not change if the plaintiff was InShot in addition
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`to or instead of Simple Design. By acknowledging Simple Design’s prior ownership, current
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`license, and right to enforce from InShot, but refusing to make a final ruling on the merits for a
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`3
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`likelihood of confusion analysis, the Board has essentially deferred deciding the real issue at hand,
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`which remains undetermined.
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`InShot would need to initiate its own cancellation proceeding, using the same cited marks
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`against the same party-defendant under the same set of facts. This would only create unnecessary
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`costs for both InShot and Cucufish while also wasting the Board’s time and resources, as a final
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`determination for a likelihood of confusion based on the same marks and the same facts can be
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`presently made. Not only would joining or substituting InShot benefit both parties and the Board
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`in costs and judicial economy, but there is precedent for InShot’s joinder or substitution that the
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`Board did not seem to consider in making its final decision.
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`i.
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`Permissive Joinder
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`Permissive joinder allows a plaintiff to be joined if there is a right to relief arising from the
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`same occurrence or series of occurrences and with common questions of law or fact for all
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`plaintiffs. Fed. R. Civ. P. Rule 20(a)(1). Here, InShot would have a right to relief from the
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`likelihood of confusion with the cited marks based on the same occurrence of the filing of
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`Applicant’s Mark and has the same questions of law and fact as Simple Design as the allegations
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`would be identical and based on identical marks with the same defendant. Therefore, permissive
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`joinder would be appropriate.
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`Alternatively, the Board could grant a substitution of InShot for Simple Design as the party-
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`plaintiff in this matter as the true owner of the cited registrations. “If an interest is transferred, the
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`action may be continued by or against the original party unless the court, on motion, orders the
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`transferee to be substituted in the action or joined with the original party.” Fed. R. Civ. P. Rule
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`25(c). “Under the provisions of the Federal Rules, amendment should be freely granted to reflect
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`the true circumstances and the present proper party in interest as reflected by the record.” Arbrook,
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`4
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`Inc. v. La Citrique Belge, Naamloze Vennootschap, 184 U.S.P.Q. 505 at *1 (TTAB 1974)
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`(approving substitution of party-opposer after deferring the motion until final hearing). In this case,
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`it would not make sense for the Board to refuse the joinder or substitution of InShot, as InShot’s
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`inclusion as a party-plaintiff would only help have a decision on the merits for the likelihood of
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`confusion issue. There would be no prejudice to Applicant, as Applicant would also be subjected
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`to another full proceeding brought by InShot rather than getting a determination on the merits here
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`and now.
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`Even though Simple Design did not file a prior motion to join or substitute InShot, such a
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`motion is not required for the Board to join or substitute a party as necessary for judicial efficiency.
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`“When there has been an assignment of a mark that is the subject of, or relied upon in, an inter
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`partes proceeding before the Board, the assignee may be joined or substituted, as may be
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`appropriate, upon motion granted by the Board, or upon the Board’s own initiative.” TBMP §
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`512.01. The Board has the ability, on its own initiative, to join or substitute an assignee. In fact,
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`the Board undertook this initiative in this very proceeding when this Board joined Astral IP
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`Enterprise Ltd. as a party-plaintiff due to an assignment of a trademark. See 14 TTABVUE 8-10.
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`Simple Design contends that InShot should have also been joined or substituted considering the
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`acknowledgement of InShot’s current ownership of the marks and authorization for Simple Design
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`to enforce the marks.
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`The timing of the assignment being prior to the initiation of the Opposition is also not a bar
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`to the Board joining or substituting a party. “When a party acquires an opposer, or the opposer’s
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`pleaded mark and the goodwill associated therewith, the acquiring party may be substituted if the
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`assignment occurred prior to commencement of the proceeding, or if the discovery and trial periods
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`have closed, or if the parties so stipulate.” William & Scott Co. v. Earl's Restaurants Ltd., 30
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`5
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`U.S.P.Q.2d 1870 at *2 (TTAB 1994) (emphasis added). The Board has specifically approved the
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`substitution of a new opposer when the assignment of the pleaded registrations occurred prior to
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`the filing of the notice of opposition. See Cf. Drive Trademark Holdings LP v. Inofin, 83 USPQ2d
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`1433, 1434 n.1 (TTAB 2007). The federal rules also allow a party to be added by the Court at any
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`time. See Fed. R. Civ. P. Rule 21. Therefore, the Board has the authority to join or substitute InShot
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`in this matter on its own initiative even without a prior motion and the assignments of the pleaded
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`marks being prior to the filing of the Opposition. This Board’s joinder of Astral IP Enterprise Ltd.
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`already shows that the Board is fully capable of joining parties when necessary to make a final
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`decision.
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`ii.
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`Required Joinder
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`Even if the Board does not wish to exercise its discretion in including InShot as a party-
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`plaintiff in this proceeding, existing law supports the requirement for the Board to add InShot as a
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`party-plaintiff and provide a full and complete decision on the merits. The Supreme Court in
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`Independent Wireless Telegraph Co. v. Radio Corporation of America, 269 U.S. 459, 466–68
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`(1926) outlined a required joinder rule that was incorporated into Fed. R. Civ. P. Rule 19. This
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`rule requires joinder of a person that is subject to service of process and will not deprive the court
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`of subject matter jurisdiction if “(A) in that person’s absence, the court cannot accord complete
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`relief among existing parties; or (B) that person claims an interest relating to the subject of the
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`action and is so situated that disposing of the action in the person’s absence may: (i) as a practical
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`matter impair or impede the person’s ability to protect the interest; or (ii) leave an existing party
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`subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations
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`because of the interest.” Fed. R. Civ. P. Rule 19(a)(1).
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`6
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`Here, InShot can be joined, just as Astral IP Enterprises Ltd. was already joined in this
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`proceeding, without prejudice to any party or any issue as to subject matter jurisdiction.
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`Furthermore, the Board cannot afford complete relief among the existing parties as there was no
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`final ruling as to the merits of the likelihood of confusion issue for any of the trademarks currently
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`owned by InShot. Simple Design, as the existing party, has an entitlement to a statutory cause of
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`action regarding the likelihood of confusion, but is unable to be provided complete relief without
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`the joinder of InShot. InShot also has a direct interest in stopping the registration of Applicant’s
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`Mark, which will be significantly impaired or impeded without InShot’s joinder as InShot would
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`not be allowed to timely bring its own separate challenge to Applicant’s Mark prior to the
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`registration. Applicant would also be left subject to multiple litigations regarding the same marks
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`and same facts that would be otherwise unnecessary if InShot were properly joined. The statute
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`creates a compulsory rule for Courts, in that the court “must order” the joinder of a party that has
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`not been properly joined. Fed. R. Civ. P. 19(a)(2).
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`The federal circuit has interpreted Fed. R. Civ. P. Rule 19 and Independent Wireless as
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`“directing courts to join patentees along with licensees who otherwise have standing.” Lone Star
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`Silicon Innovations LLC v. Nanya Technology Corporation, 925 F.3d 1225, 1237 (Fed. Cir. 2019).
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`In the Lone Star case, the licensee was determined to have standing, but not all substantial rights
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`in the asserted patents required to bring a patent infringement action. However, the Court in Lone
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`Star held that the Court was required to consider whether it was feasible to join the patent owner
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`for the purposes of required joinder. While the Lone Star case involved patent rights, the
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`underlying facts are similar to the present trademark proceeding. The licensee, being Simple
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`Design, is asserting rights where the Board has confirmed entitlement to a statutory cause of action
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`but denied that substantial ownership rights for Simple Design existed to proceed with the
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`likelihood of confusion analysis. Therefore, in line with the reasoning in Lone Star, InShot needed
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`to be considered under required joinder as the trademark owner.
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`Joining InShot is certainly feasible in this matter. The marks involved were assigned to and
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`are currently owned by InShot. InShot has a direct stake in the outcome and would be unable to
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`protect its interests in preventing the registration of Applicant’s Mark without being joined. There
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`is no procedural prevention such as claimed immunity that would prevent InShot from being
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`joined. Lastly, it is clearly feasible to join InShot since the Board was perfectly capable of joining
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`Astral IP Enterprise Ltd. in this very proceeding. The federal circuit in Lone Star held that it was
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`erroneous for the Court to dismiss the case and not consider the required joinder of the patent
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`owner. Here, it was erroneous to dismiss the Opposition without considering the required joinder
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`of InShot.
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`By not previously joining or substituting InShot, the Board failed to provide a decision on
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`the merits for the likelihood of confusion for the majority of the cited registrations, ruling solely
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`that Simple Design did not have priority regarding the trademarks currently owned by InShot. This
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`only creates a situation where InShot would bring its own separate cancellation proceeding against
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`the same defendant asserting the same marks on the same facts. There is no need for either InShot
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`or Applicant to have to go through another entire proceeding when the Board has the authority and
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`ability to issue a final ruling on the merits in the present case. Therefore, in light of the Board’s
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`original determination, Opposer contends that InShot should have been joined or substituted as the
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`party-plaintiff in order to have the matters fully and finally resolved on the merits.
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`b. The Term “and/or” is Not Ambiguous, Contradictory, or Inconsistent
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`The Board reasoned that the testimony from Opposer’s witness Zeng Li was ambiguous
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`simply because of the use of the phrase “and/or” in the testimony declaration. 14 TTABVUE 16-
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`8
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`18. The Board takes judicial notice of a dictionary definition from Merriam-Webster Dictionary,
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`but Opposer contends that this was an incorrect application of the definition for the term “and/or”,
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`which has long had a consistent and static definition in the legal field. See “AND/OR” AND THE
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`PROPER USE OF LEGAL LANGUAGE, Ira P. Robbins, 77 Md. L. Rev. 311 (2018). The term
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`“and/or” has a definite meaning of “A or B, or both.” Id. at 315. Many Supreme Court justices,
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`including justices that dislike the phrase “and/or” have authored opinions using the very term. Id.
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`(see internal citations). “Courts have held that and/or sufficiently conveys the overall intent of the
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`party using it and that the phrase and/or has a definite meaning, thus often refusing to label it as
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`ambiguous.” Id. at 328. Legislatures also commonly use the phrase “and/or” when drafting
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`statutes, in which the statutes are generally interpreted based on the statute’s overall objective. Id.
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`at 330. While Courts may dislike the use of the phrase “and/or,” Courts will erroneously hold that
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`the phrase “and/or” is ambiguous without correctly taking into account the phrase’s plain meaning.
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`Id. at 333. Here, the Board determined the definition to be “A and B” and “A or B”, but that is not
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`the correct definition as has been long used in the legal field by even the Supreme Court justices.
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`While the Board may not necessarily like or approve of the use of the phrase “and/or” in Zeng Li’s
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`testimony declaration, the use of the phrase does not create ambiguity.
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`The Board even uses the phrase “and/or” in its own ruling regarding third-party
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`registrations having different overall commercial impressions and/or identifying dissimilar goods
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`and services. See 14 TTABVUE 27. The Board is unambiguously referring to a group of third-
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`party registrations that either have different overall commercial impressions, or dissimilar goods
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`and services, or both different overall commercial impressions and dissimilar goods and services,
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`depending on the third-party registration being discussed. This is the exact same use of the phrase
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`“and/or” as used in Zeng Li’s testimony. Zeng Li’s testimony unambiguously states that a group
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`9
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`of trademarks were used by Simple Design, or InShot, or both Simple Design and InShot
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`depending on the trademark within the group that is being discussed.
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`The Board seems to take issue with the statements in Paragraphs 10, 13, 14, and 19 of Zeng
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`Li’s testimony (14 TTABVUE 16-17, 43) for using the phrase “and/or” and how the testimony
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`mentions Simple Design’s first use of the trademarks Simple Design originally owned. However,
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`these paragraphs are not ambiguous, inconsistent, or contradictory when taking Zeng Li’s
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`testimony as a whole, specifically taking into account Paragraphs 11 and 12 of Zeng Li’s testimony
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`regarding Simple Design’s original ownership and assignment of multiple registrations. See 6
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`TTABVUE 3, ¶¶ 11-12.
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`Zeng Li testifies, and the Board notes in its decision, that Simple Design was the original
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`owner of Registration Nos. 6066895 and 6193926 and that these registrations were later assigned
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`to InShot. As is well established, use by a related company inures to the benefit of the owner of
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`the trademark. TMEP §§ 1201.01, 1201.03. The term “related company” simply refers to any
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`person or entity using a mark that is controlled by the owner with respect to the nature of quality
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`of the goods for which the mark is used. TMEP § 1201.03; 15 U.S.C. §1127. This includes uses
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`through controlled licensees even if the sole use of the mark was by the controlled licensee. TMEP
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`§ 1201.03(e). There was no controversy or argument in Applicant’s brief challenging whether
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`Simple Design had prior ownership and priority rights. Applicant solely argued against the
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`likelihood of confusion and non-use allegations. Therefore, Simple Design’s prior ownership is
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`not at issue.
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`Zeng Li’s testimony is not ambiguous when taking into consideration Simple Design’s
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`prior ownership of Registration Nos. 6066895 and 6193926 and later assignment of the
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`registrations to InShot. Use inured to the benefit of Simple Design prior to the assignments,
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`10
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`regardless of whether InShot was the party effectuating the use at the time. Therefore, Simple
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`Design had use that inured to its benefit, or InShot had use through the actual use in commerce, or
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`both had use through InShot’s actual use and Simple Design’s inured benefit. Therefore, the phrase
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`“and/or” meaning “A or B, or both” is entirely accurate.
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`Following the assignments, InShot took full control of the marks and the use no longer
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`inured to the benefit of Simple Design, but Simple Design was provided a license to continue to
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`use and enforce the marks. Therefore, it would not have been accurate for Zeng Li to testify solely
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`using the terms “or” or “and” separately. Because of the nuances of use of a controlled licensee
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`inuring to the benefit of the owner of the mark and the later assignments and licenses, the phrase
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`“and/or” accurately portrays the relationship of use where the individual terms “or” and “and”
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`would fall short.
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`Ultimately, the statements that Simple Design or InShot, or both of them, used the marks
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`prior to Cucufish Tech. Co., Limited’s first use date claimed in Application Serial No. 90091938
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`are accurate under the circumstances and not ambiguous when taking the testimony as a whole.
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`Furthermore, Zeng Li’s testimony refers to Simple Design’s first use because Simple Design was
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`the owner of the mark at the time when the use inured to Simple Design’s benefit. It is not
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`inaccurate to state that the exhibits show Simple Design’s first use as that was prior to the
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`assignments where InShot’s use also counted as use for Simple Design’s ownership of the marks.
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`Zeng Li’s testimony that “Simple Design has used Registration No. 6062747” (6
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`TTABVUE 3, ¶ 10) and “Simple Design and/or InShot have continuously used Registration Nos.
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`6062747, 6193926, 6066895, and 6180377” (6 TTABVUE 3, ¶ 19) is not ambiguous as the Board
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`claims in footnote 61 (14 TTABVUE 43). The Board improperly omits the fact that the testimony
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`in Paragraph 19 uses “and/or” to refer to a group of registrations with varying uses. Zeng Li’s
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`11
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`testimony is clear that Simple Design used Registration No. 6062747 (6 TTABVUE 3, ¶ 10),
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`InShot used Registration No. 6180377 (6 TTABVUE 3, ¶ 16), and both Simple Design and InShot
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`used Registration Nos. 6193926 and 6066895 (6 TTABVUE 3, ¶ 11-14) when taking into account
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`the full life of the trademarks prior to and after assignment. Therefore, Simple Design, or InShot,
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`or both used the Registration Nos. 6062747, 6193926, 6066895, and 6180377 depending on which
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`mark is being referred to specifically within the group. Especially when taking into account Zeng
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`Li’s other statements, this is not ambiguous at all. This is also consistent with how the Board itself
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`used the phrase “and/or” in the very ruling it issued. Therefore, Zeng Li’s testimony should be
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`given proper weight, as an accurate definition of the phrase “and/or” does not create ambiguity,
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`inconsistencies, or contradictions in Zeng Li’s testimony.
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`Simple Design’s prior ownership and InShot’s use inuring to the benefit of Simple Design
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`prior to the assignments gives Simple Design priority rights in the marks over Applicant’s Mark.
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`Together with InShot’s license back to Simple Design allowing the use and enforcement of the
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`marks, Simple Design established priority through the prior rights it accumulated for itself prior to
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`the assignments that InShot authorized Simple Design to enforce. If the Board maintains its ruling
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`that Simple Design cannot benefit from the use that inured to its benefit prior to the assignments,
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`then the Board should be even more compelled to join or substitute InShot as a party in order to
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`provide a full and complete likelihood of confusion analysis and ruling on the merits.
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`c. The Board Failed to Give Proper Consideration to Established Law Cited in Opposer’s
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`Brief When Conducting the Likelihood of Confusion Analysis
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`The Board recognizes that “many of Applicant’s goods are identical or highly similar to
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`those covered by the Astral IP Registration.” 14 TTABVUE 21. The Board also recognizes that
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`there is direct overlap in the trade channels and intended consumers and that the second and third
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`12
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`DuPont factors “weigh strongly in favor of a likelihood of confusion.” 14 TTABVUE 23. The
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`Board further notes that the consumers have a low level of sophistication and care exercised in
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`downloading the parties’ products, which weighs in favor of a likelihood of confusion. 14
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`TTABVUE 40-42.
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`The Board identifies that the analysis for likelihood of confusion is not a side-by-side
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`comparison and that the focus is on the recollection of an average consumer with a general
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`recollection rather than specific impressions. 14 TTABVUE 37 (citing Coach Servs., Inc. v.
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`Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Geigy Chem.
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`Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A.
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`v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012)). The Board also acknowledges that the
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`analysis considers the marks in their entireties and is not predicated on a dissection of the involved
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`marks. 14 TTABVUE 38 (citing Stone Lion, 110 USPQ2d at 1160; Franklin Mint Corp. v. Master
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`Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981)). However, the Board proceeds to
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`misapply these cases and painstakingly dissect minor differences in a side-by-side analysis of the
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`marks. See 14 TTABVUE 38-39.
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`The Coach Servs. case cited by the Board involved marks for a word (“coach”) with
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`multiple different known meanings as applied for goods that were not similar. While a side-by-
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`side comparison was deemed improper, the comparison was based on the known differences in the
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`standard word. No such distinction was made in this case for the general overall impressions. Here,
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`the Board states that both the Astral IP mark and Applicant’s Mark “consist of a downward-facing
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`arrow centered in a square/squarish background and are suggestive of downloading.” 14
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`TTABVUE 38 (emphasis added). Despite admitting that the marks are suggestive of the same
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`thing, the Board incorrectly focuses on a side-by-side comparison when determining similarity and
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`commercial impression. The commercial impression is a downward-facing arrow in a rounded
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`square/squarish background suggestive of downloading. The “notable” differences the Board
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`points out are nothing more than minor details in the designs that do not change the overall
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`commercial impression.
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`The Geigy Chem. case cited by the Board actually supports a finding of likelihood of
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`confusion in this case. The identified differences in the marks for Geigy Chem. were based on a
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`dissection and side-by-side analysis of the words at issue, but as a whole were still considered
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`confusing. Even though the words had visible and audible differences, and the consumers were
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`doctors that would have higher sophistication, confusion was still found to be likely due to the
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`goods being identical and the fallibility of memory over time. Here, the consumers are much less
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`sophisticated than doctors, and the identical goods and large similarities of the marks would
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`support a likelihood of confusion.
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`The L’Oreal case cited by the Board is not analogous as the marks at issue were identical
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`words and the goods, while different, were determined to be similar. Here, the marks are not
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`identical words for arguably related goods, but substantially similar designs for identical goods.
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`There were no design elements considered that would be helpful in the analysis for this case.
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`The Stone Lion case cited by the Board considered the marks in their entireties and found
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`a likelihood of confusion despite the differences in the marks, noting that some of the services
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`were legally identical. Any dissection of the mark was used to identify the “dominant” portion of
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`the mark as to explain what portion of the mark was given more or less weight. Here, the Board
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`gives no such analysis of any “dominant” features. The Board notes minor differences and provides
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`no explanation as to what portion is being considered “dominant” in the analysis. Therefore, the
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`Board’s analysis is nothing more than an improper dissection and side-by-side comparison.
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`The Franklin Mint case cited by the Board compared the vastly different images
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`and
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`, noting the different overall shapes and designs rather than focusing solely on any
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`one part of the designs. Here, the Board does the exact opposite. The Board notes the overall
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`similarities of the designs, then proceeds to focus on minor details. Unfortunately, not only is the
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`analysis erroneous as a whole, but the individual conclusions impacting the overall commercial
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`impressions are also erroneous.
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` The Board points out that the registration has barely visible shading at the bottom and
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`decides that the minimal shading provides a three-dimensional effect that creates an impression of
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`a key on a keyboard. However, the Board states that just because Applicant’s Mark does not
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`contain the minimal shading, it is only two-dimensional and therefore does not create a commercial
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`impression of a key on a keyboard. This analysis is erroneous. A vertical view of a key on a
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`keyboard would give the exact image, without shading, as Applicant’s Mark. The commercial
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`impression of a key on a keyboard would be the same due to the overall impression, regardless of
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`whether one has shading that is barely even visible.
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`The Board also notes that the registration has two horizontal lines and that this somehow
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`creates the impression of downward movement that Applicant’s Mark does not have. Again, this
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`is erroneous. Merely adding a couple of horizontal lines does not all of a sudden create an
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`impression of downward movement that a downward arrow itself does not possess. A downward-
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`facing arrow, but its very nature, would indicate downward movement.
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`The Board attempts to claim differences in the backgrounds as the registration has a
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`gradient while Applicant’s Mark is a solid color. However, such background features are clearly
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`not the dominant features of the marks at issue. Furthermore, since neither mark claims color as a
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`feature of the mark, the gradient background and solid color background could use the same main
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`color. The Board does not consider this fact at all.
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`Lastly, the Board states that the arrow in Applicant’s Mark is shorter and wider than the
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`arrow in the registration. However, this is the exact type of side-by-side analysis that is improper
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`for a likelihood of confusion analysis and is not centered on the general recollection of an average
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`consumer. The average consumer will recall the downward arrow, not the exact height or width of
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`the arrow.
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`As Opposer argued in its trial brief, with design marks, the average consumer is not likely
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`to recollect details of the designs, but rather an overall general impression. See In re Vienna
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`Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990); In re United Serve. Distribs., Inc., 229
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`USPQ 237, 239 (TTAB 1986); 9 TTABVUE 21. The Vienna Sausage and United Serve. Distribs.
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`cases involve refusals for marks despite differences in side-by-side comparisons being referenced
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`as the overall commercial impression of the marks were the same. In the Board’s present analys