Architectural Elements, LLC

Trademark Trial and Appeal BoardJan 30, 2015

No. 85908555 (T.T.A.B. Jan. 30, 2015)

Mailed: January 30, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Architectural Elements, LLC _____ Serial No. 85908555 _____ Dale F. Regelman of Quarles & Brady LLP for Architectural Elements, LLC Pamela Y. Willis, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney). _____ Before Bucher, Wellington, Lykos, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Architectural Elements, LLC (“Applicant”) seeks registration on the Principal Register of the following mark for non-metal doors in International Class 19:1 1 Application Serial No. 85908555 was filed on April 18, 2013, based upon an allegation of first use of the mark in commerce on September 9, 2002, under Section 1(a) of the Trademark Act. This Opinion is not a Precedent of the TTAB Serial No. 85908555 2 The wording DESIGNER DOORS has been disclaimed. The mark is described as consisting “of a white and green door design outlined in brown, and a first line of text reading ‘Designer Doors by’ appearing in the color green, and a second line of text reading ‘AutumnWOOD’ also appearing in the color green, wherein the first line of text is separated from the second line of text by a brown line.” The colors green, brown and white, as used in the mark, are claimed as features of the mark.2 The Trademark Examining Attorney has refused registration of Applicant’s mark based on a likelihood of confusion, under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of the registered mark AUTUMNWOOD COLLECTION (in typed characters) for “vinyl siding, soffits and parts therefor” in International Class 19.3 The term COLLECTION is disclaimed. After the refusal became final, Applicant appealed. Both Applicant and the Examining Attorney filed briefs, including a reply brief from Applicant. Examining Attorney’s Objection to Materials Attached to Applicant’s Brief The Examining Attorney objects to Applicant’s submission and reliance on materials filed, for the first time, with Applicant’s brief. Specifically, she objects to the text-imbedded “Figures 1-3” (described in Applicant’s brief as “renditions” of the 2 Applicant also claimed, in its application, ownership of Registration No. 1578386 (issued on January 16, 1990) for the typed mark AUTUMN WOOD in connection with “retail furniture store services” in International Class 42. Section 8 and 15 affidavits have been filed and accepted, and the registration has been renewed. 3 Registration No. 2124818 issued on December 30, 1997. At the time the registration issued, the term “typed drawing” was used to refer to drawings that did not claim a particular font style, size or color (i.e., special form). Effective November 2, 2003, Trademark Rule 2.52 was amended to replace the term “typed” drawing with “standard character” drawing. See TMEP § 807.03. Serial No. 85908555 3 cited registered mark) and “Exhibits 1-4” (comprising papers filed in connection with the cited Registration file). Applicant did not respond to the objection in its reply brief. Because the objected-to materials were submitted for the first time with Applicant’s brief, they are untimely and have not been considered. Trademark Rule 2.142(d); see also TBMP § 1207.01 (October 2014). We now turn to the substance of the refusal of registration. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). A. Similarity of the Goods Identified in the Application and Registration We turn first to the du Pont factor involving the relatedness of the goods. Here, the record supports a finding that Applicant’s non-metal doors are related to Registrant’s vinyl siding and soffits. The Examining Attorney submitted copies of six use-based, third-party registrations that cover both non-metal doors and vinyl Serial No. 85908555 4 siding.4 Third-party registrations that individually cover the identified goods in the application and registration, and are based on use in commerce, may have some probative value to the extent that they serve to suggest that these goods are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). To further illustrate this point, the Examining Attorney submitted website evidence showing a third-party manufacturer, ProVia, offers both fiberglass doors and vinyl siding.5 Another third party, Champion, touts itself as “designs it…builds it…Installs it…Guarantees it” above a listing of products that includes “siding” and “entry doors.”6 Thus, in addition to Applicant’s non-metal doors and Registrant’s vinyl siding and soffits being building materials that may be used either in new construction or home improvement, the evidence further shows that consumers may be accustomed to these types of building materials coming from a single source. Indeed, the same manufacturer may offer both types of goods under a single house mark. In view of the above, the relatedness of the respective goods factor favors a finding of a likelihood of confusion. B. Trade Channels, Care in Purchasing and Classes of Consumers for the Goods The application and registration set forth no limitations on the trade channels or the types purchasers to whom the respective goods will be sold. We must consider 4 Attached to Office Action issued on August 6, 2013. 5 Attached to Office Action issued on March 18, 2014. 6 Id. Serial No. 85908555 5 the possibility that Applicant’s non-metal doors and Registrant’s vinyl siding and soffits will be used in the same type of job environment, whether it be new residential construction, home improvements or commercial construction. As the website materials submitted by the Examining Attorney demonstrate, both doors and siding are offered in the same construction material distribution channels, e.g., Norandex (“we specialize in exterior products that meet both the high standards of building professionals and the ever-increasing expectations of homeowners. We stock, sell, and service a comprehensive line of products [doors and siding are listed] for residential and professional builders and remodeling contractors.”), APCO (“provides sales and installation for siding, windows, doors, gutters…”), and MRV Siding Supply (listing siding and doors among other building materials).7 This demonstrates that doors and siding will be offered in the same trade channels and may be offered to the same classes of purchasers, whether it be professional builders, home remodeling contractors, or homeowners. Applicant argues that its mark is “used in conjunction with the sale of high door value, ‘designer doors.’” Brief, p. 8. Applicant also characterizes the buyer of this “design door” as a “sophisticated purchaser.” However, as previously stated, the application’s identification of goods is not so restricted; it merely lists “non-metal doors,” and this presumably encompasses doors having a wide range of purchase prices, from low budget models to more expensive ones. We make our determinations in our likelihood of confusion analysis based on the goods as they 7 Id. Serial No. 85908555 6 are identified in the registration and application. See In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It would thus be improper to focus our analysis on more expensive designer model doors; likewise, we must construe the class(es) of purchasers for Applicant’s goods to include those seeking less expensive models. In the vein, Registrant’s siding and soffits are not limited in the registration’s identification of goods to any certain grade or quality level; we must consider all models or styles that are reasonably available. Furthermore, the record does not include the price ranges for these products, doors, vinyl siding and soffits. We cannot therefore conclude that these materials are so expensive that consumers, including homeowners, would exercise such a high degree of care in their purchasing selection to negate any likelihood of confusion. Accordingly, the du Pont factors involving trade channels and classes of purchasers for Applicant’s doors and Registrant’s vinyl siding and soffits both favor finding a likelihood of confusion. Moreover, inasmuch as we find on this record that nothing more than ordinary care would be exercised by ordinary consumers for these goods, this factor remains neutral in our analysis. Serial No. 85908555 7 C. Similarity of the Marks In comparing the marks, we must consider them in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Here, we agree with the Examining Attorney that there is a strong similarity in the marks based on the shared use of the term AUTUMNWOOD. Indeed, it is this common term that forms the dominant source-identifying portion in each marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (it is not improper to give more weight to this dominant feature when evaluating the similarities of the marks). We have analyzed the marks in their entireties, but find this feature, i.e., AUTUMNWOOD, to have more trademark significance than any literal or design element in either mark. The additional literal portions in the respective marks, DESIGNER DOORS BY for Applicant and COLLECTION for Registrant, are merely descriptive or generic terms for the identified goods and have thus been disclaimed. It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re Nat'l Data Corp., 224 USPQ at 752 (“Regarding descriptive terms, this court has noted that the descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion”); In re Dixie Rests. Inc., 105 Serial No. 85908555 8 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). Likewise, Applicant’s use of a door design is highly suggestive of the identified goods and this element, too, has less significance than the wording AutumnWOOD. As our primary reviewing court has explained, when analyzing a mark comprised of both words and a design: … the verbal portion of the mark is the dominant portion since it is the one most likely to indicate the origin of the goods to which it is affixed. This makes sense given that the literal component of brand names likely will appear alone when used in text and will be spoken when requested by consumers. (“This is particularly true when a mark appears in textual material, such as catalog descriptions, in which it is often impossible or impractical to include the design feature of the mark”). In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (internal citations omitted). Applicant argues that features found in its mark, namely, the stylization and mixed use of upper and lower case lettering, along with its claim to color, all help distinguish it from the registered mark. However, the registered mark is a typed mark or the equivalent of a standard character mark (see footnote 2) and Registrant is thus entitled to all depictions of its mark with regard to font style, size, or color. In re Viterra Inc., 101 USPQ2d 1905, 1910; Citigroup Inc. v. Capital City Bank Group Inc., 637 F3d 1344, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (“Standard character or typed registrations are federal mark registrations that make no claim to any particular font style, color, or size of display and, thus, are not limited to any particular presentation.”) In other words, we must consider the possibility that Registrant’s mark will appear in the same font and color, and the common term, Serial No. 85908555 9 AUTUMNWOOD, may also appear with the same upper and lower case letters. In this case, the aforementioned features that Applicant relies upon would have little effect for purposes of distinguishing the marks. We emphasize that our determination as to the similarity of the marks is based on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) (citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975)). Further, “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). With these principles in mind and for the reasons explained above, the term common to both marks, AUTUMNWOOD, is much more likely to make a parting impression in the minds of consumers. This term is arbitrary in connection with the relevant goods thus making it a stronger point of similarity and outweighing the differences. Consumers who have encountered either Applicant’s or Registrant’s mark are likely to use this single term for purposes of later recalling or referencing the goods offered by both Applicant and Registrant. Accordingly, we find the marks to be so similar overall that this factor thus also weighs in favor of finding confusion. Serial No. 85908555 10 D. Lack of Actual Confusion and Other Relevant Factors Applicant points out that there is no evidence of actual confusion and, in support, relies on the declaration of its General Manager, Mr. Aaron Sluder, who averred that he was unaware of any instances of actual confusion between the relevant marks nor had he been contacted by Registrant “over the 11+ years of concurrent use” as a result of the similarities of the marks.8 However, “[t]he fact that an applicant in an ex parte case is unaware of any instances of actual confusion is generally entitled to little probative weight in the likelihood of confusion analysis, inasmuch as the Board in such cases generally has no way to know whether the registrant likewise is unaware of any instances of actual confusion ... .” In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001). The Board has previously explained in this regard: We recognize, of course, that the above [evidence of an absence of actual confusion] is one-sided inasmuch as it provides only applicant's experience in the marketplace and not that of registrant. Normally, in the absence of a detailed consent agreement, the registrant has no opportunity to be heard in an ex parte proceeding of this type and the Board, therefore, is not in a position to meaningfully assess whether the claimed period of contemporaneous use had provided ample opportunity for confusion to have arisen. In re General Motors Corp., 23 USPQ2d 1465, 1470 (TTAB 1992). Thus, we treat the du Pont factor of lack of evidence of actual confusion as a neutral factor. 8 Mr. Sluder also avers to his lack of knowledge with respect to any instances of actual confusion between Applicant’s own, claimed registered mark, AUTUMN WOOD (see footnote 2), and Registrant’s mark, AUTUMNWOOD COLLECTION. However, Applicant’s claimed registration covers retail furniture store services, not building materials, and thus is not relevant to our likelihood of confusion analysis in the proceeding. Serial No. 85908555 11 Finally, Applicant has argued that the Examining Attorney’s refusal is “based only upon an analysis of two of the DuPont factors, namely the similarity of [the marks] … and [the identified goods]” and that she “improperly ignores all other ‘DuPont Factors.’” Reply Brief, p. 4. We have carefully reviewed the entire record and have considered all arguments that have been made by Applicant and the Examining Attorney. The du Pont factors discussed above have been raised and we believe are most relevant in our decision. To the extent that Applicant believes any additional factors may be relevant, there is no supporting evidence of record to weigh such factors in either direction and they remain neutral. E. Conclusion In summary, we have carefully considered all of the evidence and arguments of record relevant to the du Pont likelihood of confusion factors. We conclude that because the identified building construction goods, namely non-metal doors, vinyl siding and soffits, are closely related; will travel in similar channels of trade and be offered to the same classes of consumers; and that relevant customers would exercise only an ordinary level of care in their purchases; there is sufficient similarity between the marks to cause a likelihood of confusion. Decision: The likelihood of confusion refusal to register Applicant’s mark is affirmed.