Burnden Holdings (UK) Limited

Trademark Trial and Appeal Board

Nov 8, 2005

No. 78269045 (T.T.A.B. Nov. 8, 2005)

Mailed: November 8, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Burnden Holdings (UK) Limited
________

Serial No. 78269045
_______

J. Scott Evans of Adams Evans PA for Burnden Holdings (UK)
Limited.

Nelson B. Snyder III, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Quinn, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Burnden Holdings (UK)
Limited to register the mark shown below,

for the following goods:
metal building materials, namely, soffits and
fascia; conservatory glazing systems consisting
of metal greenhouse frames; metal window frames;
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78269045
2
metal gutters; metal eaves beams and metal ridge
beams; glazing bars and replacement parts for all
the aforesaid goods in Class 6; and

non-metal building materials, namely, soffits and
fascia; building materials, namely, decking and
particle boards; pre-fabricated greenhouses;
conservatory glazing systems consisting of non-
metal greenhouse frames; plastic window frames;
non-metal gutters; plastic eaves beams and
plastic ridge beams; wooden glazing bars; non-
metallic decorative trims for conservatories,
namely finials; and replacement parts for all the
aforesaid goods in Class 19.1

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, if applied to applicant’s goods, would so
resemble the previously registered mark shown below,

for “non-metallic building materials, namely, windows and
doors,”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.

1 Application Serial No. 78269045, filed July 1, 2003, based on
an allegation of a bona fide intention to use the mark in
commerce.
2 Registration No. 2,652,417 issued November 19, 2002.
Ser No. 78269045
3
The examining attorney maintains that the registered
mark is dominated by the term “K2” which is identical to
the entirety of applicant’s mark. Thus, the examining
attorney argues that the marks are similar. As to the
goods, the examining attorney finds that the individual
building materials listed in applicant’s identification of
goods and the windows and doors listed in registrant’s
identification of goods are related products. The
examining attorney argues that consumers are likely to
believe that applicant’s building materials and
registrant’s windows and doors originate from the same
source.
Applicant, in urging reversal of the refusal to
register, argues that its mark is distinct from the mark of
registrant which includes a mountain design and the
additional word MIKRON. As to the respective goods,
applicant argues that they are very different in nature and
that they travel in different channels of trade to
different classes of purchasers. Applicant maintains that
its goods are modular kits for adding a sunroom or
conservatory to a building whereas registrant’s goods are
windows and doors. Further, according to applicant, it
sells its goods through retail channels to consumers,
whereas registrant sells its goods directly to qualified
Ser No. 78269045
4
window and door installers only. In this regard, applicant
submitted printouts from registrant’s Internet homepage.
Further, applicant argues that the purchasers of
registrant’s goods, i.e., qualified window and door
installers, are sophisticated purchasers with specialized
skills and equipment.
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. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/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).
We consider first the respective goods. The question
of likelihood of confusion must be determined based on an
analysis of the goods or services recited in applicant’s
application vis-à-vis the goods or services recited in the
registration, rather than what the evidence shows the goods
Ser No. 78269045
5
or services actually are. Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992);
and The Chicago Corp. v. North American Chicago Corp., 20
USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services
need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it
is enough that goods or services are related in some manner
or that some circumstances surrounding their marketing are
such that they would be likely to be seen by the same
persons under circumstances which could give rise, because
of the marks used or intended to be used therewith, to a
mistaken belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991), and cases cited therein.
Applicant’s goods are identified as follows:
metal building materials, namely, soffits and
fascia; conservatory glazing systems consisting
of metal greenhouse frames; metal window frames;
metal gutters; metal eaves beams and metal ridge
beams; glazing bars and replacement parts for all
the aforesaid goods in Class 6; and

non-metal building materials, namely, soffits and
fascia; building materials, namely, decking and
particle boards; pre-fabricated greenhouses;
conservatory glazing systems consisting of non-
Ser No. 78269045
6
metal greenhouse frames; plastic window frames;
non-metal gutters; plastic eaves beams and
plastic ridge beams; wooden glazing bars; non-
metallic decorative trims for conservatories,
namely finials; and replacement parts for all the
aforesaid goods in Class 19.

Although applicant argues that its goods are “complete
modular kits for adding a sunroom or ‘conservatory’ to a
building,” its goods are not identified in this manner.
(Brief, p. 16). Rather, as pointed out by the examining
attorney, applicant’s identification of goods contains a
list of individual building materials, one of which is
“pre-fabricated greenhouses.” In our likelihood of
confusion analysis, we must consider the goods as set forth
in the identification of goods. Moreover, in the absence
of any limitations as to channels of trade and purchasers,
we must presume that applicant’s goods will travel in all
the normal channels of trade for goods of this type, e.g.,
building supply stores, and that such goods are available
for purchase by all the usual purchasers, e.g., building
contractors, handymen, and do-it-yourself type homeowners.
Because registrant’s windows and doors are identified
without limitations or restrictions, we must presume that
they also travel in all the normal channels of trade for
goods of this type, and that such goods are available for
purchase by all the usual purchasers. The channels of
Ser No. 78269045
7
trade for windows and doors would include stores that
specialize in these products, as well as building supply
stores, and the purchasers would include building
contractors, handymen, and do-it-yourself type homeowners.
Thus, for purposes of our likelihood of confusion analysis,
the channels of trade and purchasers for the involved goods
are overlapping. Indeed, in a building construction or
renovation project, an individual may well purchase any one
or more of applicant’s types of goods and windows and
doors.
To establish a relationship between applicant’s
various building materials and registrant’s windows and
doors, the examining attorney has submitted copies of
third-party registrations for marks that cover one or more
of the building materials listed in applicant’s
identification of goods, on the one hand, and windows
and/or doors, on the other hand. Registration No.
2,815,507 includes window frames and doors and windows.
Registration No. 2,510,664 includes window frames and
windows. Registration No. 2,662,074 covers soffits and
doors. Registration No. 2,591,349 covers window frames and
doors and windows. Registration No. 2,169,432 covers
soffit and windows and doors. Registration No. 2,567,611
covers vinyl soffit and vinyl windows and doors.
Ser No. 78269045
8
Registration No. 2,828,927 covers soffit and doors.
Registration No. 2,549,266 covers soffits, fascia and
gutters and storm doors. Registration No. 2,670,877 covers
vinyl soffit and vinyl windows and vinyl doors. These
registrations suggest that windows and doors and the types
of building materials in registrant’s registration emanate
from the same source. See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988) [Although third-party
registrations “are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may have some probative value
to the extent that they may serve to suggest that such good
or services are the type which may emanate from a single
source”]. See also In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1786 (TTAB 1993). Under the facts of this
case, we conclude that applicant’s identified building
materials and registrant’s windows and doors are related.
With respect to the marks, although they must be
considered in their entireties, it is nevertheless the case
that, in articulating reasons for reaching a conclusion on
the issue of likelihood of confusion, “there is nothing
improper in stating that for rational reasons, more or less
weight has been give to a particular feature of a mark,
provided [that] the ultimate conclusion rests on
Ser No. 78269045
9
consideration of the marks in their entireties.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Furthermore, the test is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their commercial impression that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
The dominant feature of the registered mark is the
term “K2”. This term is much larger in size than the term
MIKRON in the registered mark. Further, the term “K2”
dominates over the mountain design and “K2” is the portion
of the mark purchasers will remember and use in calling for
the goods. In re Appetitio Provisions Co., Inc., 3 USPQ2d
1553 (TTAB 1987). The term “K2” in the registered mark is
substantially similar to applicant’s “K2” stylized mark.
While the term MIKRON and the mountain design in the
registered mark would be observed by purchasers, they would
not lead persons to conclude that the goods come from
different sources. On the contrary, persons are likely to
Ser No. 78269045
10
view the applied-for stylized mark “K2” as a variant mark
of the registrant. In finding that the marks are similar,
we note that the term “K2” is an arbitrary term as applied
to the involved goods.
We recognize that the purchase of building materials
may involve a degree of care. This, however, does not
require a finding of no likelihood of confusion. Even
assuming that the purchasers of these goods exercise care,
this does not mean that such purchasers are immune from
confusion as to the origin of the respective goods,
especially when sold under similar marks. Wincharger Corp.
v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289 (CCPA 1962); and
In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999).
In sum, we conclude that purchasers and potential
customers, who are familiar with registrant’s K2 MIKRON and
design mark for its windows and doors, would be likely to
believe, upon encountering applicant’s “K2” stylized mark
for the identified building materials, that such goods
emanate from, or are sponsored by or associated with the
same source.
Decision: The refusal to register under Section 2(d)
with respect to both classes 6 and 19 is affirmed.