Spectrum Enterprise General Trading LLC

This Opinion is not a
Precedent of the TTAB

Mailed: July 30, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Spectrum Enterprise General Trading LLC
_____

Serial No. 87540077
_____

David L. Oppenhuizen of Oppenhuizen Law PLC,
for Spectrum Enterprise General Trading LLC.

Cassie Anderson, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.

_____

Before Cataldo, Goodman, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:

Spectrum Enterprise General Trading LLC (“Applicant”) seeks registration on the

Principal Register of the proposed composite mark shown below for “cigarettes” in

International Class 34:1

1 Application Serial No. 87540077 was filed on July 24, 2017, based on Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act. 15 U.S.C. § 1051(b). The description of the proposed mark reads: “The mark consists of
a semicircular arc extending in a clockwise direction from an upper middle portion to a lower
left portion, and including the literal element ‘VOXX’ positioned between the ends of the arc,
and a horizontal line extending across the arc and being positioned above the literal element.”
Color is not claimed as a feature of the proposed mark.
Serial No. 87540077

The Trademark Examining Attorney has refused registration of Applicant’s

proposed mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the

ground of likelihood of confusion with the cited registered mark VOX (in standard

characters) for inter alia “electronic cigarettes; … cigarettes containing tobacco

substitutes not for medical purposes…” in International Class 34.2

After the Trademark Examining Attorney made the refusal final, Applicant

appealed to this Board. We affirm the refusal to register.

I. Likelihood of Confusion

We base our determination of likelihood of confusion under Trademark Act Section

2(d) on an analysis of all of the probative facts in evidence that are relevant to the

factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ

563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,

575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Guild

Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).

We have considered each DuPont factor that is relevant, and have treated other

factors as neutral. See Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.
2 Registration No. 4893732 issued on the Principal Register on January 26, 2016.

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Serial No. 87540077

1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d

1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant to every case,

and only factors of significance to the particular mark need be considered.”));

ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)

(“While we have considered each factor for which we have evidence, we focus our

analysis on those factors we find to be relevant.”).

Varying weights may be assigned to each DuPont factor depending on the evidence

presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98

USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d

1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less

weighty roles in any particular determination”). Two key considerations are the

similarities between the marks and the relatedness of the goods. See Federated Foods,

Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (the

“fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences

in the essential characteristics of the goods and differences in the marks.”); In re

FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018).

A. The Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of

Applicant’s and Registrant’s marks in their entireties, taking into account their

appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at

567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110

USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot

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Serial No. 87540077

Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.

2005). “‘Similarity in any one of these elements may be sufficient to find the marks

confusingly similar.’ In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-

Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968)

(“It is sufficient if the similarity in either form, spelling or sound alone is likely to

cause confusion.”) (citation omitted).” In re Inn at St. John’s, LLC, 126 USPQ2d 1742,

1746 (TTAB 2018).

Applicant’s applied-for mark adopts the registered mark VOX in its entirety,

adding an “X” and a semicircular arc and horizontal line design. “Marks have

frequently been found to be similar where one mark incorporates the entirety of

another mark, as is the case here. Coca-Cola Bottling Co. v. Joseph E. Seagram and

Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL is similar to

BENGAL LANCER); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB

1982) (EBONY is similar to EBONY DRUM); In re S. Bend Toy Mfg. Co., 218 USPQ

479, 480 (TTAB 1983) (LIL’ LADY BUG is similar to LITTLE LADY).” TiVo Brands

LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB 2019). Applicant’s addition of an

“X”, forming “VOXX”, makes little difference in their appearance. See In re Great

Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“Moreover, although there are

certain differences between the marks [CAYNA and CANA] in appearance, namely,

the inclusion of the letter ‘Y’ and the design feature in applicant’s mark, there are

also obvious similarities between them.”). And the addition would make no difference

in the marks’ sound, as it merely repeats the letter “X”; both marks could be

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Serial No. 87540077

pronounced the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912

(Fed. Cir. 2012) (any minor differences between XCEED and X-SEED and Design

would go undetected by consumers) “Despite specific differences in spelling … the

dominant factor for consideration is the likelihood of confusion arising from the

similarity in sound of the two words when spoken.” Krim-Ko Corp. v. Coca-Cola Co.,

390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (Finding the aural similarities of the

marks VEEP and BEEP to be such that confusion would be likely).

Given the marked similarity between VOX and VOXX, it is easy to see why

Applicant’s design elements, a semicircular arc and horizontal line, fail to distinguish

the marks. VOXX is the dominant component of its proposed mark, as that is the part

consumers would use to ask for its brand of cigarettes. In re Viterra, 101 USPQ2d at

1908; In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (the

word part of a composite mark is normally accorded greater weight than the design.).

The design portion of its mark consists of ordinary geometric shapes that do not make

a particularly strong commercial impression. See In re Dixie Rests. Inc., 105 F.3d

1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) cited in In re Morinaga Nyugyo

Kabushiki Kaisha, 120 USPQ2d 1738, 1742 (TTAB 2016). Consequently, consumers,

who retain a general rather than a specific impression of marks, In re Mr. Recipe,

LLC, 118 USPQ2d 1084, 1089 (TTAB 2016), would tend to overlook the minute

differences between the two.

For these reasons, we find that the marks are highly similar. The first DuPont

factor thus weighs heavily in favor of finding a likelihood of confusion.

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Serial No. 87540077

B. The Goods, Channels of Trade, and Classes of Customers

The second DuPont factor concerns the “similarity or dissimilarity and nature of

the goods or services as described in an application or registration,” Stone Lion

Capital v. Lion Capital, 110 USPQ2d at 1159, and the third DuPont factor concerns

“[t]he similarity or dissimilarity of established, likely-to-continue trade channels.” Id.

at 1161 (quoting DuPont, 177 USPQ at 567).

With respect to the second DuPont factor, the question of likelihood of confusion

must be determined based on an analysis of the goods identified in Applicant’s

application vis-à-vis the goods identified in the cited registration. See Stone Lion

Capital v. Lion Capital, 110 USPQ2d at 1161; Hewlett-Packard Co. v. Packard Press

Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston

Computer Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

Applicant’s goods are “cigarettes,” and Registrant’s pertinent goods are “electronic

cigarettes” and “cigarettes containing tobacco substitutes not for medical purposes,”

both in International Class 34.

The Examining Attorney contends that the respective goods are legally identical,

as “cigarettes” encompasses “electronic cigarettes.”3 Applicant counters that the two

goods are different by definition. A cigarette is defined as “a slender roll of cut tobacco

enclosed in paper and meant to be smoked” while an electronic cigarette is “a battery-

operated device that is typically designed to resemble a traditional cigarette and is

3 Examining Attorney’s brief, 6 TTABVUE 11 et seq.

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Serial No. 87540077

used to inhale a usually nicotine-containing vapor.”4 We agree that the goods are not

legally identical, as one does not encompass the other. Cf. In re Hughes Furniture

Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded

identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified

‘residential and commercial furniture.’”). They are, however, highly related, as they

perform similar functions—as delivery devices for inhaling smoke or vapor?and one

may substitute for another.

To demonstrate this relatedness, the Examining Attorney has submitted evidence

in the form of 19 use-based third-party registrations identifying the respective goods

offered by the same source under the same mark, e.g.:

Registration Mark Pertinent Goods
No.
5253857 AUGVAPE Cigarettes, electric cigarettes

Cigarettes; Cigarettes containing tobacco substitutes,
5208999 not for medical purposes; electronic cigarettes

Cigarettes; cigarettes containing tobacco substitutes,
5441692 not for medical purposes; oral vaporizers for smokers;
electronic cigarettes
Cigarettes; cigarettes containing tobacco substitutes,
5415830 not for medical purposes; electronic cigarettes

Cigarettes containing tobacco substitutes, not for
medical purposes; electric cigarettes; filter-tipped
5442284 POLAR NIGHT cigarettes

Cigarettes; cigarettes containing tobacco substitutes,
not for medical purposes; electronic cigarettes; filter-
5398361 tipped cigarettes5

4 Merriam-Webster.com 4/20/2018, April 30, 2018 Response to Office Action at 6-7.
5 May 14, 2018 Office Action at 7-47, 67-79.

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Serial No. 87540077

“As a general proposition, although use-based, third-party registrations alone are

not evidence that the marks shown therein are in use or that the public is familiar

with them, they nonetheless may have some probative value to the extent they may

serve to suggest that the goods are of a kind that emanate from a single source.” In

re I-Coat Co., LLC, 126 USPQ2d 1730, 1738 (TTAB 2018) (citing Hewlett-Packard v.

Packard Press, 62 USPQ2d at 1004 (evidence that “a single company sells the goods

and services of both parties, if presented, is relevant to the relatedness analysis”)).

Applicant states that it “does not wish to improperly challenge any of the third-

party registrations submitted by the examining attorney.” Yet it challenges their

probative value, arguing that the vast majority of these third-party registrations are

owned by companies based in China?reportedly the source of many recent USPTO

trademark filings with specimens of questionable legitimacy:

[W]hen the weight of this evidence is determined then it must be
considered that the vast majority of these registrations are owned and were
filed pro se by Chinese applicants. As such, the question of whether or not
these trademarks are in actual use in connection with both cigarettes and
electronic cigarettes because if the actual use of these marks is in question,
then there is little remaining evidence submitted by the examining
attorney to demonstrate that these two types of goods are thought to be
related by consumers.6

Applicant’s argument constitutes a collateral attack on the third-party

registrations, which we cannot entertain on this appeal because of the statutory

presumptions that must be accorded to registrations under Section 7(b) of the

6 Applicant’s brief, 4 TTABVUE 4-5.

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Serial No. 87540077

Trademark Act. 15 U.S.C. § 1057(b). In re Solid State Design Inc., 125 USPQ2d 1409,

1410 (TTAB 2018). Moreover, we note that six of the third-party registrations are

owned by United States registrants.

Applicant attempts to counter the Examining Attorney’s third-party registration

evidence with six pairs of registrations purportedly showing that the Office has

allowed two different registrants to register cigarettes on the one hand and electronic

cigarettes on the other, under the same or similar marks.7 As the Examining Attorney

notes, however, Applicant’s third-party evidence fails for two reasons. First,

Applicant did not make these registrations of record during the course of

examination, so they will not be considered. Trademark Rule 2.142(d), 37 CFR §

2.142(d); In re I-Coat, 126 USPQ2d at 1734; TRADEMARK TRIAL AND APPEAL BOARD

MANUAL OF PROCEDURE (“TBMP”) §§ 1203.02(e), 1207.01 (2019). Second, even if they

were considered, the registrations do not prove Applicant’s point, as they show

differing marks for differing products?e.g., IMPORTED DREAMS MENTHOL for

“cigarettes and cigars” versus VANILLA DREAMS for “electronic cigarettes”;

ISLAND LIFESTYLE for “cigar and cigarette boxes” versus FORBIDDEN ISLAND

for “electronic cigarette liquid.”8 Hence, Applicant’s third-party registration evidence

does not disprove the Examining Attorney’s evidence that the goods are related, and

are often sold by the same entity under the same mark. See In re G.B.I. Tile and Stone

Inc., 92 USPQ2d 1366, 1369-70 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634,

7 Applicant’s brief, 4 TTABVUE 5-6.
8 Id., 4 TTABVUE 6.

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Serial No. 87540077

1639 (TTAB 2009) (finding third-party registrations of limited value because goods

identified in the registrations were in fields far removed from the involved products).

In any event, for Applicant’s and Registrant’s identified goods to be related, it is not

necessary that they always emanate from the same source under the same mark. The

fact that they do so frequently is evidence that “the respective products are related in

some manner and/or … 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. v. Triumph Learning, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir.

2012).

In the absence of limitations in the application or cited registration, we must

presume that the goods would travel through all usual channels of trade and are

offered to all normal potential customers?in this case, smokers and vapers. In re

i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1750 (Fed. Cir. 2017). The

Examining Attorney has introduced third-party evidence showing that cigarettes and

electronic cigarettes travel through the same channels of trade, such as Smokers-

Mall.com,9 BurnAndBrewVa.com,10 and TobaccoMarts.com,11 to smokers and vapers.

Applicant does not contest this evidence.Therefore, under the second and third

DuPont factors, Applicant’s and Registrant’s goods are considered related, and their

channels of trade are the same or overlap for likelihood of confusion purposes.

C. Conditions of Purchase

9 Smokers-Mall.com 5/14/2016, May 14, 2018 Office Action at 48-53.
10 BurnAndBrewVa.com 5/14/2018, May 14, 2018 at 54-60.
11 TobaccoMarts.com 5/14/2018, May 14, 2018 at 61-63.

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Serial No. 87540077

Under the fourth DuPont factor, we consider “[t]he conditions under which and

buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”

DuPont, 177 USPQ at 567.

Applicant asserts that:

the sophistication level of the purchaser should be considered. In this case,
users of both cigarettes and electronic cigarettes are very knowledgeable
about their respective products, and cigarette smokers are especially loyal
to their particular brand or specific type of cigarette that they like. Both
cigarettes and electronic cigarettes target a specific line and unique group
of consumers, and the consumers of these goods are cognizant of the several
tobacco brands and have substantial brand loyalty. Brand recognition and
association is integral in this field of goods. Therefore, there is no chance
of consumer confusion in commerce.12

As the Examining Attorney correctly points out, however, Applicant has presented

no evidence that the relevant consumers are sophisticated.13 Applicant’s argument is

predicated on its attorney’s assertion, which is not evidence. Zheng Cai v. Diamond

Hong, 127 USPQ2d at 1799 cited in Performance Open Wheel Racing, Inc. v. United

States Auto Club Inc., 2019 USPQ2d 20891, *8 n. 62 (TTAB 2019). There is nothing

in the nature of the goods that would imply that its purchasers are particularly

sophisticated or careful. See In re I-Coat, 126 USPQ2d at 1739. In fact, the standard

of care is that of the least sophisticated potential purchaser. Stone Lion Capital v.

Lion Capital, 110 USPQ2d at 1163 cited in In re FCA US LLC, 126 USPQ2d 1214,

1222 (TTAB 2018) (“Board precedent requires our decision to be based on the least

sophisticated potential purchasers.”). In the absence of any evidence relating to the

12 Applicant’s brief, 4 TTABVUE 2-3.
13 Examining Attorney’s brief, 6 TTABVUE 8.

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Serial No. 87540077

degree of care purchasers exercise, the similarity of the marks and relatedness of the

goods outweigh Applicant’s assertion that purchasers are sophisticated or careful in

their purchases. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819,

1823 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546,

14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh

sophisticated purchasers, careful purchasing decision, and expensive goods).

All in all, we have no basis to find that ordinary consumers would exercise more

than an ordinary degree of care. The fourth DuPont factor is neutral.

D. Actual Confusion

Under the seventh and eighth DuPont factors, we consider the nature and extent

of any actual confusion, in light of the length of time and conditions under which

there has been contemporaneous use of Applicant’s and Registrant’s subject

marks. DuPont, 177 USPQ at 567.

Applicant argues that:

Applicant has been using the mark “VOX” [sic] in connection with
cigarettes in foreign territories for number of years, and has foreign
trademark registrations up to eight years old. … The Applicant has
established a market presence throughout many notable markets in the
world and has secured registration rights in those markets. Furthermore,
the Applicant is not aware of any actual confusion between its mark and
the cited registration, despite the Applicant’s use of “VOXX” throughout
numerous countries.14

As the Examining Attorney observes, however, the standard is likelihood of

confusion, not actual confusion.15 See In re Detroit Athletic Co., 903 F.3d 1297, 128

14 Applicant’s brief, 4 TTABVUE 3-4.
15 Examining Attorney’s brief, 6 TTABVUE 9.

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Serial No. 87540077

USPQ2d 1047, 1053 (Fed. Cir. 2018). “[U]ncorroborated statements of no known

instances of actual confusion are of little evidentiary value.” In re Guild Mortg. Co.,

912 F.3d 1376, 129 USPQ2d 1160, 1163 (Fed. Cir. 2019) (quoting Majestic Distilling,

65 USPQ2d at 1205). This especially holds true in an ex parte context, where there is

no chance for a registrant to show what opportunity for confusion there is based on

registrant’s use and advertising of its mark. See In re Opus One Inc., 60 USPQ2d

1812, 1817 (TTAB 2001); In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1204-05

(TTAB 2009). In this case, for example, Applicant has submitted evidence of its

foreign registrations of VOXX & Design in countries such as Singapore, Jamaica,

Guyana and Sudan,16 but the extent of use of Registrant’s mark in those countries is

unknown. Moreover, Applicant’s present application is on an intent-to-use basis, so

we are at a disadvantage to gauge the opportunity for actual confusion to have

occurred in the U.S. marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943,

55 USPQ2d 1842, 1847 (Fed. Cir. 2000); Primrose Ret. Cmtys., LLC v. Edward Rose

Senior Living, LLC, 122 USPQ2d 1030, 1039-40 (TTAB 2016).

Applicant’s assertion of lack of actual confusion thus carries no probative value.

The seventh and eighth DuPont factors are neutral.

E. House Mark

The thirteenth DuPont factor is any other established fact probative of the effect

of use. DuPont, 177 USPQ at 567.

16 April 30, 2018 Response to Office Action at 10-23.

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Serial No. 87540077

Applicant argues that Registrant’s mark VOX is consistently paired with

Registrant’s house mark “VAPORFI.” For instance:

17

“Therefore,” Applicant contends, “there is not a likelihood of confusion between

the Applicant’s applied-for mark and the Registrant’s mark as actually used because

the house mark will always be used as a source identifier to distinguish between the

source of the goods.”18

This “house mark” argument is unavailing for two reasons. First, “we do not

consider how Applicant and Registrant actually use their marks in the marketplace,

but rather how they appear in the registration and the application. We must compare

the marks as they appear in the drawings, and not on any labels that may have

additional wording or information.” In re Aquitaine Wine, 126 USPQ2d at 1186 (citing

In re i.am.symbolic, 123 USPQ2d at 1729). The cited registration is for the standard

character mark VOX. Registrant is under no obligation to pair its VOX mark with

another mark, and is free to use its VOX mark on its goods, standing alone. Second,

17 April 30, 2018 Response to Office Action at 8.
18 Applicant’s brief, 4 TTABVUE 3.

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Serial No. 87540077

use of a house mark does not generally obviate confusion, as it is likely that goods

sold under Registrant’s and Applicant’s marks would be attributed to the same

“house” source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007); Key

West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982)

(finding likelihood of confusion between SKIN SAVERS for face and throat lotion and

MENNEN SKIN SAVER for cosmetic and toilet preparations, namely, hand and body

lotion).

For these reasons, the thirteenth DuPont factor is neutral.

II. Conclusion

When we consider the record and the relevant likelihood of confusion factors, and

all of Applicant’s arguments relating thereto, including those arguments not

specifically addressed herein, we conclude that consumers familiar with Registrant’s

goods offered under its mark would be likely to believe, upon encountering

Applicant’s proposed mark, that the goods originated with or are associated with or

sponsored by the same entity.

Decision: The refusal to register Applicant’s proposed mark is affirmed

under Section 2(d) of the Trademark Act.

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