This Opinion is Not a
`Precedent of the TTAB
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`
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`Mailed: August 10, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____
`
`Trademark Trial and Appeal Board
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`_____
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`In re SBOX Holdings LLC1
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`_____
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`Serial No. 88886981
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`_____
`
`Timothy S. Hsieh of MH2 Technology Law Group LLP and Evan A. Raynes of
`Symbus Law Group PLLC, for SBOX Holdings LLC.
`
`
`Verna B. Ririe, Trademark Examining Attorney, Law Office 104,
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`Zachary Cromer, Managing Attorney.
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`
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`_____
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`Before Taylor, Lynch, and Johnson,
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`Administrative Trademark Judges.
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`Opinion by Lynch, Administrative Trademark Judge:
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`1 During the pendency of this appeal, the subject application was assigned, “together with
`the business and the goodwill associated with the” mark, from EWB Holdings LLC to SBOX
`Holdings LLC. The assignment document dated February 15, 2022 was recorded with the
`USPTO Assignments Database on February 21, 2022.
`
`

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`Serial No. 88886981
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`I. Background
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`SBOX Holdings LLC (“Applicant”) seeks registration on the Principal Register of
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`the mark CAMBIO in standard characters for “jewelry” in International Class 14 and
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`“retail store services featuring jewelry” in International Class 35.2 The application
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`includes the statement that “[t]he English translation of CAMBIO in the mark is
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`‘CHANGE.’” The Examining Attorney refused registration under Trademark Act
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`Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the prior
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`registered mark CAMBIARE in standard characters, for “jewelry” in International
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`Class 14.3 The registration includes the statement that “[t]he English translation of
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`‘CAMBIARE’ in the mark is ‘TO CHANGE.’”
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`After the Examining Attorney made the refusal final, Applicant filed a request for
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`reconsideration and appealed. The Examining Attorney denied the request for
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`reconsideration, maintaining the likelihood of confusion refusal. The appeal then
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`proceeded, and was fully briefed. As explained below, we affirm the refusal to register.
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`II. Evidentiary Matters
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`We first address a couple of evidentiary points to clarify the record. First,
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`Applicant’s Request for Reconsideration and Brief cite to links to websites that
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`Applicant contends “enable the listener to hear the actual pronunciations of the
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`2 Application Serial No. 88886981 was filed April 24, 2020, under Section 1(b) of the
`Trademark Act, 15 U.S.C. § 1051(b).
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`3 Registration No. 5829466 issued August 6, 2019.
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`Serial No. 88886981
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`parties’ marks.”4 Providing an Internet link to a webpage is insufficient to make the
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`referenced audio materials of record. See In re Fantasia Distrib., Inc., 120 USPQ2d
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`1137, at *21 n.13 ((TTAB 2016) (Board “cannot consider the video itself” which does
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`not become part of the record through a YouTube link, and noting that mutimedia
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`files may be submitted through the TEAS Response to Office Action form). Because
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`of the ephemeral nature of Internet websites, the “Board does not accept Internet
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`links as a substitute for submission of a copy of the resulting page.” TV Azteca, S.A.B.
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`v. Martin, 128 USPQ2d 1786, 1789 n.15 (TTAB 2018) (citing In re Aquitaine Wine
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`USA, LLC, 126 USPQ2d 1181, 1194 n.21 (TTAB 2018) and In re Olin Corp., 124
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`USPQ2d 1327, 1332 n.15 (TTAB 2017)). Given the lack of objection by the Examining
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`Attorney, we have considered Applicant’s assertions about the audio, which are
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`discussed below, but “we cannot consider the [audio] itself, which we do not have.”
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`Fantasia Distrib., 120 USPQ2d 1137, at *21 n.13.
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`Second, Applicant makes arguments in its Brief based on “the file history of the
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`CAMBIARE registration,”5 but did not introduce it into the record. In an ex parte
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`appeal such as this, while the prosecution file history of the involved application is
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`automatically of record, the same does not hold true for the file history of the cited
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`registration. In re Sela Prods. LLC, 107 USPQ2d 1580, 1583 (TTAB 2013) (“there is
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`no equivalent [to inter partes proceedings] rule for ex parte proceedings that makes
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`the file of a cited registration of record”). Rather, for the prosecution file history of a
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`4 TSDR September 29, 2021 Request for Reconsideration at 3; see also 6 TTABVUE 7
`(Applicant’s Brief).
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`5 6 TTABVUE 9 (Applicant’s Brief).
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`Serial No. 88886981
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`cited registration or a portion thereof to be considered, it must be timely introduced
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`as evidence. Id. During prosecution, Applicant did not submit the file history or make
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`arguments explicitly based on the file history, which might have prompted the
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`Examining Attorney to alert Applicant of the necessity of introducing it. Given that,
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`we do not consider Applicant’s assertions about the alleged content of the file history.
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`III. Likelihood of Confusion
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`Our determination under Section 2(d) involves an analysis of all of the probative
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`evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
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`& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
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`considered, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315
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`F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). The Board considers only those
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`DuPont factors for which there is evidence and argument. In re Guild Mortg. Co., 912
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`F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). “Not all DuPont factors are
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`relevant in each case, and the weight afforded to each factor depends on the
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`circumstances.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994,
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`2020 USPQ2d 10341, *3 (Fed. Cir. 2020). Two key considerations are the similarities
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`between the marks and the relatedness of the goods and services. See In re Chatam
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`Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); Federated Foods,
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`Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
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`fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
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`in the essential characteristics of the goods and differences in the marks.”).
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`Serial No. 88886981
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`A. The Goods and Services, Trade Channels and Classes of
`Consumers
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`The second and third DuPont factors address the relatedness of the goods and
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`services and the trade channels in which they travel.
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`Under the second factor, “likelihood of confusion can be found ‘if the respective
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`goods [and services] are related in some manner and/or if the circumstances
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`surrounding their marketing are such that they could give rise to the mistaken belief
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`that they emanate from the same source.’” Coach Servs. v. Triumph Learning LLC,
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`668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (internal citations omitted).
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`In analyzing such relatedness, we look to the identifications in the application and
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`cited registration. See In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051
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`(Fed. Cir. 2018); Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110
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`USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs.
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`Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
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`The cited registration’s identification of “jewelry” is identical to Applicant’s
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`“jewelry” and highly related to Applicant’s “retail store services featuring jewelry.”
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`Applicant does not contest the relatedness of jewelry and retail stores that feature it,
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`and the record shows that such goods and services tend to emanate from the same
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`source, under the same mark.6 We agree that consumers are accustomed to
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`6 E.g., TSDR July 21, 2020 Office Action at 30-43 (TIFFANY used for retail jewelry stores
`and jewelry); TSDR April 14, 2021 Office Action at 14-51 (use-based third-party registrations
`with jewelry and retail jewelry store services under the same mark). See Detroit Ath. Co., 128
`USPQ2d at 1050 (crediting relatedness evidence that third parties use the same mark for the
`goods and services at issue because “[t]his evidence suggests that consumers are accustomed
`to seeing a single mark associated with a source that sells both”); L’Oreal S.A. v. Marcon, 102
`USPQ2d 1434, 1140 (TTAB 2012) (third-party use-based registrations are relevant to show
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`Serial No. 88886981
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`encountering under the same mark jewelry such as in the cited registration and retail
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`store services featuring it, such as Applicant’s. “[S]tore services and the goods which
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`may be sold in that store are related goods and services for the purpose of determining
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`likelihood of confusion.” In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992)
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`(clothing is related to retail outlet services for camping and mountain climbing
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`equipment); see also In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025,
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`1026 (Fed. Cir. 1988) (retail general merchandise store services are related to
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`furniture). This general principle holds true in the particular context of jewelry and
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`jewelry stores. In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (jewelry store
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`services are related to jewelry); In re Best Prods. Co., Inc., 231 USPQ 988, 989 (TTAB
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`1986) (retail jewelry store services are related to men’s and ladies’ bracelets and
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`watch bracelets).
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`Under the third DuPont factor, to the extent the goods in the cited registration
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`and the application are identical, we must presume that the trade channels and
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`classes of consumers for those goods also are identical. See Cai v. Diamond Hong,
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`Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re Viterra Inc., 671
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`F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
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`evidence regarding channels of trade and classes of consumers, the Board was
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`entitled to rely on this legal presumption in determining likelihood of confusion); see
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`also Inter IKEA Sys. B.V. v. Akea, 110 USPQ2d 1734, 1743 (TTAB 2014); L. & J.G.
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`that the respective goods and services are of a type that may emanate from a single source
`under one mark).
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`Serial No. 88886981
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`Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1971 (TTAB 2007) (“Because the goods of
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`both parties are at least overlapping, we must presume that the purchasers and
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`channels of trade would at least overlap.”). As to the retail jewelry services and the
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`jewelry, the record, including webpages from Tiffany, Zales, and Jared,7 shows that
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`retail jewelry services such as those recited in the application feature jewelry such as
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`the cited registration identifies, and therefore these goods and services travel in some
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`of the same trade channels to the same classes of consumers. Accordingly, the trade
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`channels and classes of consumers, at a minimum, overlap.
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`The second and third DuPont factors weigh heavily in favor of likely confusion.
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`B. Similarity of the Marks
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`We compare the marks CAMBIO and CAMBIARE “in their entireties as to
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`appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v.
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`Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
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`1691 (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements
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`may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC,
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`126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019)
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`(citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We assess not whether
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`the marks can be distinguished in a side-by-side comparison, but rather whether
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`their overall commercial impressions are similar enough that confusion as to the
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`source of the goods and services offered under the respective marks is likely to result.
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`Coach Servs., 101 USPQ2d at 1721; see also Edom Labs. Inc. v. Lichter, 102 USPQ2d
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`7 TSDR July 20, 2021 Office Action at 6-43.
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`Serial No. 88886981
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`1546, 1551 (TTAB 2012). Where, as here, the goods in Class 14 are identical, the
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`degree of similarity necessary to find likelihood of confusion need not be as great as
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`where there is a recognizable disparity between the goods. Coach Servs. Inc., 101
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`USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
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`23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
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`As an initial matter, Applicant and the Examining Attorney dispute the proper
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`framework for comparing the marks, particularly regarding consideration of them as
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`foreign-language words. The Examining Attorney argues that “both consist of a
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`variant of the Latin root CAMBIARE which is used in various conjugations in modern
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`language.”8 More specifically, the Examining Attorney points to evidence that “both
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`marks are conjugations of the same word in the Spanish language” … “with the word
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`‘CAMBIO’ being the present tense of [CAMBIAR] and ‘CAMBIARE’ being the future
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`tense of the word.”9 Applicant, on the other hand, insists that the cited mark is an
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`Italian word, and that “two foreign words should not normally be compared to
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`determine whether a likelihood of confusion exists.”10
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`The record indicates that CAMBIO and CAMBIAR both are Spanish words, both
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`are Italian words, and both are Latin words.11 As discussed below, Applicant’s
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`designation of its mark as a Spanish-language word does not control consumer
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`8 8 TTABVUE 5 (Examining Attorney’s Brief).
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`9 8 TTABVUE 5 (Examining Attorney’s Brief).
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`10 6 TTABVUE 9 (Applicant’s Brief).
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`11 TSDR April 14, 2021 Office Action at 2-3 (Latin -- latin-is-simple.com), 5-7 (Latin -- latin-
`dictionary.net), 8-10 (Spanish -- spanishdict.com); TSDR December 14, 2021 Denial of
`Reconsideration at 2-3 (Italian -- wordsense.eu)
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`Serial No. 88886981
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`perception of the word, as consumers proficient in Latin or Italian may perceive and
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`recognize the word in accordance with their familiarity with it as a Latin or Italian
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`word. The same holds true for the cited mark.
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`Bearing this in mind, we find Applicant’s mark, CAMBIO, and the cited mark,
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`CAMBIARE, similar in appearance, sound, connotation and commercial impression.
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`Each mark consists of a single term, and the first two syllables of the marks are
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`identical – CAMBI. As the first portion of the marks, this identical component,
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`CAMBI, stands out and makes more of an impression on potential purchasers. See
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`Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1755 (TTAB 2009) (finding PALOMA
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`and PALOMITA confusingly similar where “it is the first portion of a mark that is
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`more likely to make an impression on potential purchasers and here the beginning
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`and core elements of the words are the same”); Hercules Inc. v. National Starch &
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`Chemical Corp., 223 USPQ 1244, 1246 (TTAB 1984) (“considering the marks
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`NATROL and NATROSOL in their entireties, the clearly dominant aspect of both
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`marks is that the first four letters and the final two are the same”); see also Palm Bay
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`Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
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`73 USPQ2d 1689 (Fed. Cir. 2005); Presto Products Inc. v. Nice-Pak Products Inc.,
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`9 USPQ2d 1895, 1897 (TTAB 1988). Following the identical CAMBI portions of each
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`mark, Applicant’s ends with an O and the cited mark ends with ARE. While this
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`creates some difference in the appearance and phonetics of the marks, overall,
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`CAMBIO and CAMBIARE still look and sound similar.
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`Serial No. 88886981
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`Applicant contends that “the differences in the pronunciations of the parties’
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`marks is [sic] stark” because the cited mark “is pronounced cam-biar-ay.”12 As
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`discussed above, the record does not include pronunciation materials. Also, U.S.
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`consumers may vary in their views of the marks and the pronunciations thereof,
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`depending on whether a consumer views the words as coined terms, a coined term
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`and an English-language word, Spanish words, Italian words, or Latin words. See,
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`e.g., StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649,
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`1651 (Fed. Cir. 2014) (“There is no correct pronunciation of a trademark that is not a
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`recognized word.”); In re Allegiance Staffing, 115 USPQ2d 1319, 1325 (TTAB 2015)
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`(agreeing that there is no correct pronunciation of mark that is a coined term); see
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`also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012)
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`(stating that “there is no correct pronunciation of a trademark, and consumers may
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`pronounce a mark differently than intended by the brand owner”). Moreover, even if
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`the cited mark is pronounced as Applicant suggests, we still find the sound of the
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`marks similar because of the shared CAMBI component. Bearing this in mind, we
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`find that the pronunciations of CAMBIO and CAMBIARE likely would be fairly
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`similar.
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`Turning to the connotation and commercial impression, according to the
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`Examining Attorney, “Spanish speaking consumers in particular will view the marks
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`as having the same commercial impression.”13 The Examining Attorney also argues
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`12 6 TTABVUE 7 (Applicant’s Brief) (emphasis in original).
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`13 8 TTABVUE 5 (Examining Attorney’s Brief).
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`Serial No. 88886981
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`that the translation in the application, “change” and the translation in the cited
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`registration, “to change,” confirm that “the marks essentially have a common
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`meaning.”14 Applicant counters, relying on the cited registration’s prosecution history
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`that is not in the record, that CAMBIARE is Italian, and therefore is from a different
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`foreign language than Applicant’s mark, such that their similar meanings would not
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`be recognizable, because “it is highly unlikely that an ordinary American purchaser
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`would be fluent in two different foreign languages.”15 Markedly, the cited registration
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`includes a translation statement that does not indicate what foreign language is
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`being translated. Where wording such as this is part of multiple languages appears
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`in a mark without other indicia of a particular language, the trademark owner’s
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`intent would not control consumer perception of the relevant foreign language. See In
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`re Yale Sportswear Corp., 88 USPQ2d 1121, 1125 (TTAB 2008) (“[A]n applicant’s or
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`registrant’s intended interpretation of the mark is not necessarily the same as the
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`consumer’s perception of it.”); Interpayment Servs. Ltd. v. Docters & Thiede, 66
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`USPQ2d 1463, 1465 (TTAB 2003) (“[I]t does not matter what applicant’s intentions
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`were in creating its mark or what its characterization of its mark is.”).
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`The Examining Attorney and Applicant both made arguments regarding the
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`connotation of the marks involving whether the doctrine of foreign equivalents
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`applies in this case. Regarding the doctrine of foreign equivalents, which typically
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`involves, “foreign words from common [modern] languages [being] translated into
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`14 8 TTABVUE 6 (Examining Attorney’s Brief).
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`15 6 TTABVUE 9 (Applicant’s Brief).
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`Serial No. 88886981
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`English to determine … similarity of connotation in order to ascertain confusing
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`similarity with English word marks.” Palm Bay Imps., 73 USPQ2d at 1696. The
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`doctrine of foreign equivalents is normally applied where one mark is in a foreign
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`language, and the other mark is in English. Brown Shoe Co. v. Robbins, 90 USPQ2d
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`at 1756. Although the doctrine also may apply in other scenarios, we need not resort
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`to it here. As noted above, where these words of Latin origin in each mark might be
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`viewed by some consumers as Latin, by some consumers as Spanish, by some
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`consumers as Italian, and by those consumers without proficiency in any of the
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`relevant languages, as coined terms. See id. (“Here, where both marks are Spanish
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`words we must consider the connotation of the marks to both non-Spanish-speaking
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`consumers and to Spanish-speaking consumers.”). To the extent we consider the
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`connotation of the marks to speakers of the relevant foreign languages, the words
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`would not require translation, and they share a very similar meaning as different
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`conjugations of the same verb. To the extent we consider the connotation of the mark
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`to non-speakers of the foreign languages, the words in the marks would be viewed as
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`coined terms without a particular meaning but with a similar appearance and
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`pronunciation. See id. (“In English the words have no meaning and therefore,
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`although non-Spanish-speaking consumers would not understand the words, because
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`of the similarity in appearance and pronunciation the marks likely would be
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`perceived as having similar meanings”).
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`Given their overall resemblance in appearance, sound, connotation and
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`commercial impression, we find Applicant’s mark and the cited mark similar,
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`Serial No. 88886981
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`particularly because we must consider the marks “‘in light of the fallibility of
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`memory.’” See In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed.
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`Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565
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`F.2d 683, 196 USPQ 1 (CCPA 1977)).
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`Thus, the first DuPont factor favors a finding of likelihood of confusion.
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`IV. Conclusion
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`The similarity of the marks for in part identical goods and highly related goods
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`and services that move in overlapping channels of trade to the same classes of
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`customers renders confusion likely.
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`Decision: The refusal to register Applicant’s mark CAMBIO under Section 2(d)
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`of the Trademark Act is affirmed.
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