Cold Spring Granite Company

Trademark Trial and Appeal BoardMay 24, 2012

No. 77888783 (T.T.A.B. May. 24, 2012)

Hearing: Mailed: November 3, 2011 May 24, 2012 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Cold Spring Granite Company ________ Serial No. 77888783 _______ Christopher J. Schulte of Merchant and Gould PC for Cold Spring Granite Company. Kelley L. Wells, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Bucher, Kuhlke and Shaw, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Cold Spring Granite Company seeks registration on the Principal Register of the mark SIERRA WHITE (in standard character format) for “granite, cut stone, dimensional stone, slabs of granite, and monumental stone” in International Class 19.1 The Trademark Examining Attorney issued a final refusal to register this designation based upon Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining 1 Application Serial No. 77888783 was filed on December 8, 2009, based upon applicant’s claim of use anywhere and use in commerce since at least as early as 1954. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77888783 - 2 - Attorney has taken the position that applicant’s mark, when used in connection with the identified goods, so resembles the mark, SIERRA STONE, registered for goods identified as “cast stone” also in International Class 19,2 as to be likely to cause confusion, to cause mistake or to deceive. After the Trademark Examining Attorney made the refusal final, applicant appealed to this Board. Applicant and the Trademark Examining Attorney have fully briefed the issues in this appeal, and both appeared at an oral hearing held before this panel of the Board. We affirm the refusal to register. Arguments of applicant and the Trademark Examining Attorney In urging registrability, applicant contends that the marks are dissimilar, that there is a difference in the nature of the goods as well as the channels of trade in which they travel and are marketed, that the word “Sierra” is diluted in the relevant industry, that the marks have coexisted for decades without any confusion, and that given the high cost of these goods, consumers will necessarily be fairly discriminating. By contrast, the Trademark Examining Attorney argues that the marks are highly similar, that the cited mark has 2 Registration No. 1765902 issued on April 20, 1993; renewed. Serial No. 77888783 - 3 - not been shown to be weak for stone products, that we are not necessarily faced with expensive goods targeted to discriminating purchasers, and we must presume that the channels of trade could be the same. Likelihood of Confusion We turn then to a consideration of the issue of likelihood of confusion. Our determination of likelihood of confusion is based upon our analysis of all of the probative facts in evidence that are relevant to the factors bearing on this issue. See 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); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of confusion analysis, however, two key, although not exclusive, considerations are the similarities between the marks and the relationship between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). The Similarity of the Marks As to the first du Pont factor in any likelihood of confusion determination, we compare the similarity or dissimilarity of the marks in their entireties as to Serial No. 77888783 - 4 - appearance, sound, connotation and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Because the similarity or dissimilarity of the marks is determined based upon a comparison of the marks in their entireties, applicant is correct that the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based upon the entire marks, not just select parts of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) [“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion”]. On the other hand, different features may be analyzed to determine whether the marks are similar. Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re National Data Corp., 224 USPQ at 751. Serial No. 77888783 - 5 - In the case at hand, we find specifically that the leading term in both marks (“Sierra”) comprises the dominant elements of these marks. As to appearance and sound, the word “Sierra” creates a strong similarity. As to connotation, the word “White” in applicant’s mark is a descriptive term containing informational matter that has been correctly disclaimed apart from the mark as shown. Similarly, the word “Stone” in registrant’s mark is a generic or highly-descriptive term containing informational matter that has also been correctly disclaimed apart from the mark as shown. Hence, we accord less weight to these second terms, although our ultimate conclusion rests upon a consideration of the marks in their entireties. To the extent that the term “Sierra” is evocative of a mountain range, the marks would both create nearly identical commercial impressions. Accordingly, given the similarity in commercial impressions, we find that this critical du Pont factor supports a likelihood of confusion herein. Strength of the Cited Mark Applicant argues that “Sierra” formatives are in sufficiently common use in the building and construction industries that the relevant purchasers are able to distinguish among those Sierra-formative marks based upon Serial No. 77888783 - 6 - small distinctions in the marks. Applicant’s appeal brief at 14. As to the third-party registrations applicant has made part of the record, they are entitled to little weight on the question of likelihood of confusion because they are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Furthermore, we agree with the Trademark Examining Attorney that most of these registrations are for construction and building supply products quite different from those of applicant and registrant. In fact, based upon this record, we cannot find that “Sierra” is weak for stones, whether cast or natural. As to the Internet web pages and results of an extensive Lexis/Nexis search, it is difficult to locate probative evidence in this material inasmuch as an indeterminate number of these listed businesses using the designation “Sierra Stone” actually appear to be U.S. distributors of registrant’s goods. At the best for applicant, this is a neutral factor in our analysis. Serial No. 77888783 - 7 - Relationship of the Goods We turn next to the du Pont factor focused on the relationship of the goods involved herein. The cited registration lists the involved goods as simply “cast stone.” This is a masonry product molded from aggregates and cement that provides ornamental or functional features to buildings and other structures.3 Even though cast stone is molded, it could be used in ornamental or functional features of buildings instead of cut or dimensional stone, or in some cases, the more expensive granite. We find that this critical du Pont factor too supports a likelihood of confusion herein. Channels of trade and conditions of sale Applicant argues that in reality, the trade channels of applicant and registrant are quite different. According to applicant, it sells natural stone directly to fabricators, contractors, landscape distributors, etc., while registrant sells directly to end consumers. However, as noted by the Trademark Examining Attorney, neither identification of goods contains any limitations as to nature, type, expense, 3 Although applicant provides Internet web pages suggesting that registrant is currently known more for distributing a decorative stone and epoxy overlay for repairing concrete, we must consider the goods as identified in the application for registration in 1992 and as renewed in 2002. Serial No. 77888783 - 8 - channels of trade or classes of purchasers. Furthermore, evidence placed into the record by applicant demonstrates that registrant, a Canadian company, appears to market its product in the United States through a series of regional distributors and local retailers. Therefore, it seems these goods may well move in all normal channels of trade, and that they are available to all potential customers, from building materials retailers to contractors and perhaps even ordinary consumers of construction materials. Contemporaneous usage without Actual Confusion We turn then to the du Pont factor dealing with the length of time during and conditions under which there has been contemporaneous usage without evidence of actual confusion. In this regard, we acknowledge applicant’s position that its SIERRA WHITE mark is clearly not a newcomer to the U.S. market. For the sake of argument, we assume it has been in the marketplace since 1954. And applicant makes much of the fact that despite twenty years of contemporaneous usage, there have been no instances of actual confusion. As to whether there has been sufficient opportunity for confusion to occur, applicant’s own arguments suggest there have been few opportunities for this to occur. Moreover, the record contains no indication of the level of sales or Serial No. 77888783 - 9 - advertising of applicant’s goods. The absence of any instances of actual confusion is a meaningful factor only where the record indicates that, for a significant period of time, an applicant’s sales and advertising activities have been so appreciable and continuous that, if confusion were likely to happen, any actual incidents thereof would be expected to have occurred. Similarly, we have no information about the nature and extent of registrant’s actual usage of the cited mark. For all of these reasons, applicant’s claim that no instances of actual confusion have been brought to applicant’s attention is not indicative of an absence of a likelihood of confusion. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In any event, the test under Section 2(d) of the Act is likelihood of confusion, not actual confusion. Conclusion In 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, when potential purchasers of registrant’s “cast stone” encounter applicant’s various enumerated products such as cut stone and dimensional stone, they are likely to believe Serial No. 77888783 - 10 - that the sources of these goods are the same or in some way related or associated. As a result, there is a likelihood of confusion herein. Decision: The refusal of the Trademark Examining Attorney to register the applied-for mark under Section 2(d) of the Lanham Act is hereby affirmed.