Baldwin Hardware Corp.

Trademark Trial and Appeal Board

Jan 19, 1999

No. 75046595 (T.T.A.B. Jan. 19, 1999)

Paper No. 9
SIMMS/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 19, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Baldwin Hardware Corporation
________
Serial No. 75/046,595
_______
Edgar A. Zarins of Masco Corporation for Baldwin Hardware
Corporation.
Frances G. Smith, Trademark Examining Attorney, Law Office
103 (Michael Szokes, Managing Attorney)
_______
Before Simms, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Baldwin Hardware Corporation (applicant), a
Pennsylvania corporation, has appealed from the final
refusal of the Trademark Examining Attorney to register the
mark THE ESTATE COLLECTION for metal cabinet hardware,
namely, handles, pulls and knobs and metal bathroom
accessories, namely, towel bars, towel rings, tissue
holders, soap dishes and toothbrush/tumbler holders, in
Ser No. 75/046,595
2
Class 6.1 The Examining Attorney has refused registration
under Section 2(d) of the Act, 15 USC §1052(d), on the
basis of Registration No. 1,899,424, issued June 13, 1995,
for the mark ESTATES COLLECTION (“COLLECTION” disclaimed)
for drinking glasses, toothbrush holders, and waste baskets
sold only in applicant’s department stores, in Class 21;
bed sheets, blankets, dust ruffles, decorative fabric table
rounds, curtains, textile valances, towels, pillow shams,
comforters and shower curtains, sold only in applicant’s
department stores, in Class 24; braided and stencil-print
rugs, sold only in applicant’s department stores, in Class
27; and pillows and chair pads, sold only in applicant’s
department stores, in Class 20. The registration is owned
by Dayton Hudson Corporation.
Briefly, the Examining Attorney argues that the marks
are very similar in sound, appearance and meaning
(applicant does not argue that the marks are dissimilar),
and that some of the goods in the registration are
essentially identical to some of the goods listed in
applicant’s application (for example, toothbrush holders v.
toothbrush/tumbler holders).

1 Application Serial No. 75/046,595, filed January 22, 1996,
based upon applicant’s bona fide intention to use the mark in
commerce under Section 1(b) of the Act, 15 USC §1051(b). In the
application, applicant has disclaimed exclusive rights to use the
word “COLLECTION” apart from the mark as shown.
Ser No. 75/046,595
3
Applicant, on the other hand, argues that the goods
are not identical and that the channels of trade of the
respective goods do not conflict. More particularly,
applicant’s attorney states that applicant’s goods include
attachable metal hardware for cabinets and the bath which
are mounted to the cabinet, and metal bathroom accessories
for mounting to the wall. According to applicant’s
attorney, each of these metal goods is made of brass,
resulting in a heavy and relatively expensive item, which
would cause consumers to carefully consider their
purchases. Registrant’s goods, according to applicant, are
relatively inexpensive decorative accessories which may be
purchased “on a whim.” Applicant also notes that
registrant’s goods are sold in its department stores,
whereas applicant’s goods are sold to independent home
specialty stores including plumbing outlets and home
stores. The respective products, according to applicant,
would not be found in the same aisles or departments of
home centers, even if they were all sold in such stores.
In response, the Examining Attorney contends that
there is no limitation with respect to the composition of
registrant’s goods, which may also be made of metal. The
Examining Attorney also contends that there is nothing in
applicant’s identification that restricts applicant’s goods
Ser No. 75/046,595
4
from being sold through department stores, including
registrant’s department stores.
We agree with the Examining Attorney that applicant’s
mark THE ESTATE COLLECTION is substantially identical to
registrant’s mark ESTATES COLLECTION. Except for the “S”
in registrant’s mark, the respective marks are almost
identical. They are similar in sound, appearance and
meaning.
With respect to the goods, as the Examining Attorney
has noted, registrant’s toothbrush holders (the item most
similar to any of applicant’s goods) and applicant’s
toothbrush/tumbler holders are very similar, if not
identical, products. If only one item in a particular
class in an application is the same as a product or service
listed in the cited registration, and if the marks are
confusingly similar, then registration may be refused. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648
F.2d 1335, 209 USPQ 986 (CCPA 1981). The only real issue,
as we see it, is whether confusion is likely despite the
restriction in registrant’s identification of goods
limiting the channels of trade of registrant’s products to
its own department stores.
The fact that registrant’s goods may be sold only in
registrant’s own stores is, of course, a factor which we
Ser No. 75/046,595
5
must consider. Here, applicant’s goods (as we must look at
them), even if registrant chose not to sell them, would be
sold in similar or competing retail stores. In this case
we believe that prospective purchasers, familiar with
registrant’s ESTATES COLLECTION toothbrush holders and
related goods including drinking glasses and waste baskets,
sold in registrant’s department stores, who then encounter
applicant’s THE ESTATE COLLECTION toothbrush/tumbler
holders and other goods in different retail stores, are
likely to believe that applicant’s goods are produced or
sponsored by the registrant but now sold in a different
store. That is to say, these prospective purchasers are
likely to believe that registrant has now chosen to sell
toothbrush holders, etc. in other stores besides its own
retail department stores. In this regard, we have held
that confusion may be likely even though goods may be sold
in different channels of trade [Tiffany & Co. v. Classic
Motor Carriages, Inc., 10 USPQ2d 1835 (TTAB 1989) (holding
confusion likely between opposer’s famous mark TIFFANY and
applicant’s mark TIFFANY CLASSIC for automobiles, despite
the fact that opposer does not sell automobiles). See also
Habitat Design Holdings Limited v. Habitat, Inc., 196 USPQ
425, 430 (S.D.N.Y. 1977) (“The fact that the junior user
markets its products in a manner different from that used
Ser No. 75/046,595
6
by the registrant does not, without more, raise the
inference that the public is not likely to be confused.”)].
Accordingly, because the respective marks are
substantially similar and some of applicant’s goods are
almost identical to registrant’s goods, we believe that
purchasers encountering applicant’s goods would be confused
as to source.
Decision: The refusal of registration is affirmed.
R. L. Simms
B. A. Chapman
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 75/046,595
7