In Re: Halo Leather Limited ( 2018 )


Menu:
  •        NOTE: This disposition is nonprecedential.
    United States Court of Appeals
    for the Federal Circuit
    ______________________
    IN RE: HALO LEATHER LIMITED,
    Appellant
    ______________________
    2017-1849
    ______________________
    Appeal from the United States Patent and Trademark
    Office, Trademark Trial and Appeal Board in No.
    86530941.
    ______________________
    Decided: June 13, 2018
    ______________________
    WILLIAM JOHN SEITER, Seiter Legal Studio, Santa
    Monica, CA, for appellant.
    NATHAN K. KELLEY, Office of the Solicitor, United
    States Patent and Trademark Office, Alexandria, VA, for
    appellee Andrei Iancu. Also represented by THOMAS L.
    CASAGRANDE, SARAH E. CRAVEN, CHRISTINA J. HIEBER,
    THOMAS W. KRAUSE.
    ______________________
    Before PROST, Chief Judge, NEWMAN and REYNA, Cir-
    cuit Judges.
    PER CURIAM.
    2                                 IN RE: HALO LEATHER LIMITED
    In this trademark case, Halo Leather Limited seeks to
    register the mark “AQUAPEL” and an associated design
    for leather or imitation leather home goods, including
    beds, curtain rails, curtain hooks, curtain rings, mattress-
    es, and tables. The examining attorney in the Patent and
    Trademark Office rejected Halo’s application on the
    ground that the mark is likely to be confused with a
    registered mark “AQUAPEL” for home goods including
    bed blankets, comforters, curtain fabric, curtains of tex-
    tile, mattress covers and pads, table linen, textile fabrics,
    and textile place mats. The Trademark Trial and Appeal
    Board upheld the examining attorney’s rejection based on
    its findings that the two marks are similar in terms of
    their appearance, sound, connotation, and commercial
    impression, and that consumers would likely identify
    goods covered under the marks to emanate from a single
    source. We affirm.
    I
    Halo Leather Limited (“Halo”) filed the application at
    issue in 2015, seeking to register the mark “AQUAPEL”
    with an associated design, shown below.
    IN RE: HALO LEATHER LIMITED                                 3
    In its application, Halo describes the mark as “con-
    sist[ing] of the term ‘AQUAPEL’ in stylized letters ap-
    pearing below a bull[’]s skull with horns, all on a
    background depicting beads of water repelled from a flat
    surface.” J.A. 35. Halo identified the mark for use with
    the following goods under two categories:
    [International Class 18] Leather and imita-
    tions of leather and goods made of these mate-
    rials and not included in other classes, namely,
    animal skins, animal hides, trunks and travel-
    ling bags; umbrellas; parasols; walking sticks,
    whips, harnesses and saddlery, suitcases, gym
    bags and holdalls, wallets and purses, hand-
    bags, traveling bag sets; valises, luggage, brief-
    cases, leather key holders, unfitted leather
    furniture covers; and
    [International Class 20] Furniture; mirrors;
    beds; chairs; wood bedsteads, benches; non-
    metal bins; cabinets; chests for toys; chests of
    drawers; chests, not of metal; coat stands; con-
    tainers for household use; counters, namely,
    tables; crates; cupboards; curtain rails; curtain
    hooks; curtain rings; deckchairs; desks; draft-
    ing tables; dressing tables; foot stools; picture
    frames; magazine racks; shelves and metal and
    non-metal shelving; mattresses; office furni-
    ture; pillows; sideboards; sofas; ottomans; arm-
    chairs; statues of wood; statuettes of wood,
    plaster or plastic; stools; table tops; tables;
    trestle tables; tea trolleys; work benches;
    kitchen furniture, namely, kitchen cabinets;
    cushions; storage racks.
    J.A. 35–36.
    The examining attorney’s search of prior-registered
    marks revealed that Nanotex, LLC (“Nanotex”) already
    registered the mark “AQUAPEL” in standard character
    4                               IN RE: HALO LEATHER LIMITED
    form (Registration No. 4230659, issued October 23, 2012)
    for use with the following goods:
    [International Class 24] Bed blankets; Com-
    forters; Curtain fabric; Curtains of textile;
    Mattress covers; Mattress pads; Shower cur-
    tains; Table linen; Textile fabrics for home and
    commercial interiors; Textile fabrics for the
    manufacture of clothing; Textile place mats.
    J.A. 101–02.
    In the initial office action, the examining attorney
    issued a partial refusal. The examining attorney did not
    object to the registration for certain Class 18 goods—
    trunks and travelling bags; umbrellas; parasols; walking
    sticks, whips, harnesses and saddlery, suitcases, gym
    bags and holdalls, wallets and purses, handbags, travel-
    ing bag sets; valises, luggage, briefcases, leather key
    holders. 1    However, the examining attorney refused
    registration for the rest of Class 18 goods generally relat-
    ed to leather and imitation leather products, including
    animal skins, animal hides, and unfitted leather furniture
    covers. The examining attorney also refused registration
    as to all of the Class 20 goods in Halo’s application gener-
    ally related to home furnishings.
    The examining attorney based the rejections primari-
    ly on two findings. First, the marks are “confusingly
    similar” as the word portions of the two marks are identi-
    cal. Second, the respective goods are related and “con-
    sumers are likely to be confused and mistakenly believe
    that the respective goods emanate from a common
    source.” J.A. 48. The examining attorney cited evidence
    from retailer websites for home goods and furniture to
    1  These goods are not at issue in this appeal. The
    Board confirmed that registration for these goods “will
    proceed to publication in due course.” J.A. 13.
    IN RE: HALO LEATHER LIMITED                                5
    show that companies commonly manufacture the relevant
    goods and market the goods under the same mark. J.A.
    47–48; see 
    id. at 51–100
    (documenting various websites).
    The examining attorney concluded that Halo’s rejected
    goods and the goods under Nanotex’s registration are
    related for likelihood of confusion purposes, and that
    consumers are likely to be confused and mistakenly
    believe that the respective goods emanate from a common
    source.
    Halo responded that its mark is not likely to be con-
    fused with Nanotex’s mark because the refused goods in
    its application do not overlap with the goods under Nano-
    tex’s mark and are not appreciably related. The examin-
    ing attorney issued a final action, rejecting Halo’s
    argument and maintaining refusal of Class 20 and the
    same set of Class 18 goods. In addition to the internet
    evidence cited in the initial office action, the examining
    attorney listed additional evidence of third-party trade-
    marks for use with the same or similar goods as those
    covered by Halo’s and Nanotex’s marks. J.A. 117; see 
    id. 119–60 (documenting
    various third-party trademark
    registrations). Halo requested reconsideration from the
    examining attorney, which the examining attorney de-
    nied. 2 Halo appealed to the Trademark Trial and Appeal
    Board (“Board”).
    2    In its request for reconsideration, Halo amended
    its Class 20 application to add, at the end of its list of
    goods, two qualifying clauses:
    [A]ll of the foregoing featuring leather or imi-
    tation leather, and none of the foregoing in-
    cluding or featuring bed blankets, comforters,
    curtain fabric, curtains of textile, mattress co-
    vers, mattress pads, shower curtains, table lin-
    6                                IN RE: HALO LEATHER LIMITED
    On appeal, the Board agreed with the examining at-
    torney’s findings. The Board concluded that Halo’s mark
    is similar to Nanotex’s mark in terms of appearance,
    sound, connotation, and commercial impression because
    they share identical words and because Nanotex’s mark is
    the only registered mark with the term “AQUAPEL” for
    home goods. The Board also found the goods are similar
    because these goods are sometimes registered under a
    single mark and are advertised and sold through the
    same channels. As a result, a consumer is likely to con-
    clude that the relevant goods emanate from a single
    source.
    II
    The question of whether there is a likelihood of confu-
    sion between a registered mark and a mark for which a
    registration application has been filed is an issue of law
    based on underlying facts. On-Line Careline, Inc. v. Am.
    Online, Inc., 
    229 F.3d 1080
    , 1084 (Fed. Cir. 2000). The
    legal conclusions of the Trademark Trial and Appeal
    Board are subject to de novo review, while the Board’s
    factual findings must be sustained if they are supported
    by substantial evidence. See In re Save Venice N.Y., Inc.,
    
    259 F.3d 1346
    , 1351 (Fed. Cir. 2001). To decide whether a
    likelihood of confusion has been shown in a particular
    case requires us to consider the factors summarized in In
    re E.I. DuPont DeNemours & Co., 
    476 F.2d 1357
    , 1361
    (CCPA 1973). The two DuPont factors at issue in this
    appeal are (1) the similarity of the marks, and (2) the
    similarity of the goods.
    en, textile fabrics for home and commercial in-
    teriors or textile place mats.
    J.A. 221.
    IN RE: HALO LEATHER LIMITED                             7
    A
    Evaluating the similarity between a registered mark
    and an applicant’s mark requires examination of the
    appearance, sound, connotation, and commercial impres-
    sion of the two marks. See In re Martin’s Famous Pastry
    Shoppe, Inc., 
    748 F.2d 1565
    , 1566 (Fed. Cir. 1984). Apply-
    ing those criteria in this case, we conclude that the
    Board’s determination that Halo’s mark and Nanotex’s
    registered mark are confusingly similar is supported by
    substantial evidence.
    Nanotex’s mark contains the term “AQUAPEL” in
    standard character form, while Halo’s mark contains the
    identical term with a design element. Although the
    marks are to be assessed in their entirety, the word
    portion of a word and design mark is usually viewed as
    the dominant element. See In re Viterra Inc., 
    671 F.3d 1358
    , 1366–67 (Fed. Cir. 2012). The term “AQUAPEL”
    appears prominently on Halo’s mark, and appears in a
    similar font and style to Nanotex’s registered mark. J.A.
    40, 102. Substantial evidence supports the Board’s con-
    clusion as to the marks’ similarity.
    Substantial evidence also supports the Board’s finding
    that Nanotex’s registered mark is strong because the term
    “AQUAPEL” is an arbitrary term without an established
    meaning when used in connection with the goods at issue.
    Halo contests this finding and argues that the
    “AQUAPEL” mark is suggestive—namely, that it suggests
    that the goods in the cited registration are water-
    repellant. But even assuming the term “AQUAPEL”
    could suggest that goods in the registration are water-
    repellent, as Halo argues, Nanotex’s registration is not
    limited to only water-repellent goods. There is also no
    indication that Nanotex sells exclusively water-repellent
    goods under the cited registration.
    We conclude that substantial evidence supports the
    Board’s finding that these two marks, assessed in their
    8                               IN RE: HALO LEATHER LIMITED
    entirety, are confusingly similar in terms of appearance,
    sound, connotation and commercial impression.
    B
    “[L]ikelihood of confusion can be found if the respec-
    tive products are related in some manner and/or if the
    circumstances surrounding their marketing are such that
    they could give rise to the mistaken belief that they
    emanate from the same source.” Coach Servs., Inc. v.
    Triumph Learning LLC, 
    668 F.3d 1356
    , 1369 (Fed. Cir.
    2012) (citation and quotation marks omitted). The Board
    found that consumers are likely to think that the goods
    listed in Halo’s application under Class 20 and certain
    goods under Class 18 and Nanotex’s goods are so related
    that they emanate from the same source. Substantial
    evidence supports this finding.
    The Board cited to multiple third-party registrations
    that cover various goods from both Nanotex’s registration
    and Halo’s application to show that they generally belong
    to the category of home goods. The Board also listed
    websites of third-party retailers showing the use of a
    single mark to identify furniture, bedding fabrics, and
    placemats. Similarly, as to Halo’s animal skins and
    hides, the Board highlighted evidence of retailers selling
    skins and hides, together with bedding, fabrics, and/or
    placemats under a single mark. These examples are
    substantial evidence that consumers are accustomed to
    seeing the kinds of goods in Nanotex’s registration and
    Halo’s application being offered under one mark by a
    single source. See Hewlett-Packard Co. v. Packard Press,
    Inc., 
    281 F.3d 1261
    , 1267 (Fed. Cir. 2002) (finding the
    evidence that “a single company sells the goods and
    services of both parties, if presented, is relevant to the
    relatedness analysis”).
    On appeal, Halo does not contest the accuracy of the
    Board’s evidence, but contends that “something more” is
    required beyond that the goods are used together. Appel-
    IN RE: HALO LEATHER LIMITED                                9
    lant’s Br. 13–14. But this argument mischaracterizes the
    Board’s finding. The Board did not merely find that the
    goods are used together, but that the evidence shows the
    goods come from the same sources under one mark. Beds
    and bedding are offered together. Tables, kitchen furni-
    ture, placemats, and table linen are offered together.
    Curtains are offered together with curtain hooks, rails,
    and rings. The Board did not err in finding that consum-
    ers are accustomed to seeing the applied-for and regis-
    tered goods originating from the same source. Multiple
    registrations for marks simultaneously covering the
    registrant’s and applicant’s goods confirm this finding.
    The record demonstrates that beyond that the goods are
    used together, the goods commonly emanate from a single
    source.
    For the same reason, Halo’s amended description of
    the Class 20 goods in its application to add the “feature
    leather and imitation leather” language and to exclude all
    the goods in Nanotex’s registration from its application
    does not change this finding. In finding of likelihood of
    confusion, there is no requirement that the goods be
    identical so long as one of the goods in the application is
    sufficiently related to one of the goods in the registration
    such that consumers would be likely to think they were
    offered by the same source. See, e.g., Hewlett-Packard
    
    Co., 281 F.3d at 1267
    (“Even if the goods and services in
    question are not identical, the consuming public may
    perceive them as related enough to cause confusion about
    the source or origin.”). Here, the likelihood of confusion is
    caused by the high degree of relatedness of the parties’
    goods, not by their being identical.
    This is not a case like In re Coors Brewing Co., 
    343 F.3d 1340
    , 1346–47 (Fed. Cir. 2003), in which the court
    found that the Board’s evidence was insufficient to sup-
    port the finding that two marks sharing the term “BLUE
    MOON” are related. In Coors, one mark was for restau-
    rant services, and the other mark was for beer. 
    Id. 10 IN
    RE: HALO LEATHER LIMITED
    Although the court found that the two marks were simi-
    lar, their applications were different: one was for services
    and the other for goods. See 
    id. (holding that
    it is not true
    that “any time a brand of [food or beverage] has a trade-
    mark that is similar to the registered trademark of some
    restaurant, consumers are likely to assume that the [food
    or beverage] is associated with that restaurant”). Unlike
    Coors, both Halo’s application and Nanotex’s mark con-
    cern similar goods, and substantial evidence supports the
    Board’s finding that a consumer would likely view the
    goods under Halo’s mark and Nanotex’s mark emanating
    from a single source.
    III
    For the reasons stated, we affirm the Board’s decision.
    AFFIRMED
    COSTS
    No costs.