Columbia Insurance Company

Trademark Trial and Appeal BoardMar 31, 2011

No. 77723718 (T.T.A.B. Mar. 31, 2011)

Mailed: March 31, 2011 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Columbia Insurance Company ________ Serial No. 77723718 _______ Lisa A. Iverson of Neal & McDevitt, LLC for Columbia Insurance Company. Dominic Fathy, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). _______ Before Bucher, Kuhlke and Mermelstein, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Columbia Insurance Company seeks registration on the Principal Register of the mark EXOTIC VISIONS (in standard character format) for “engineered wood flooring” in International Class 19.1 The Trademark Examining Attorney issued a final refusal to register this mark based upon Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney has taken the position that applicant’s 1 Application Serial No. 77723718 was filed on April 28, 2009, based upon applicant’s allegation of a bona fide intention to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77723718 - 2 - mark, when used in connection with the named goods, so resembles the mark VISIONS (in standard character format) registered for “laminate flooring,” 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. The Trademark Examining Attorney and applicant have briefed the issues in this appeal. We affirm the refusal to register. In urging registrability, applicant argues that the respective marks differ in appearance, sound, meaning, connotation, and commercial impression, and that given the number of similar marks registered by third parties in connection with goods in International Class 19, past Office practice supports a degree of coexistence consistent with the registration of applicant’s mark. By contrast, the Trademark Examining Attorney argues that the word “Visions” is the dominant element of applicant’s mark and that the respective marks are similar, and that many of the third-party registrations with which applicant attempts to demonstrate that the term 2 Registration No. 3573306 issued on February 10, 2009. Serial No. 77723718 - 3 - “Visions” (or “Vision”) is diluted, involve goods quite different from registrant’s and applicant’s goods. 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). We turn to the du Pont factor assessing the relationship of the goods. The Trademark Examining Attorney has shown a representative sampling of marks applied by third party manufacturers and merchants to both engineered wood flooring and laminate flooring. Even though these named goods are manufactured and installed quite differently, 3 they appear to be competitive types of affordable flooring products. Applicant does not address this factor in its brief, so it seems applicant has conceded that these goods 3 Registration Nos. 3126434, 3293775, 3326371, 3370453, 3386940, 3386940, 3393059, 3413032, 3492602, 3510324 and 3613836. Serial No. 77723718 - 4 - are closely related. The Trademark Examining Attorney also showed from multiple websites that these respective products move through the same online retail outlets.4 Furthermore, there is no limitation in either applicant’s or registrant’s identification of goods, so we presume that the identical goods will flow through overlapping channels of trade to the same classes of ordinary consumers. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). These related du Pont factors favor a finding of likelihood of confusion. Applicant argues that registrant’s cited “Visions” mark is weak because of the number of “visions-formative” marks registered for home building products in Int. Class 19. However, the evidence from third-party registrations that applicant proffered does not support this conclusion. Of the twenty-five registrations submitted by applicant, four involved cancelled registrations. The majority of the marks were for the singular form, “Vision” or “Visione,” not “Visions.” Of the “Visions” marks, eight are owned by a single manufacturer of windows. In the third-party registrations with marks having a form of the 4 For example, http://www.builddirect.com/, http://www.simplefloors.com/, http://www.floorsnfloors.com/, http://www.lumberliquidators.com/ and http://www.888400floor.com/. Serial No. 77723718 - 5 - word “Visions,” none of the identifications of goods was closely related to engineered wood or laminate flooring. On the other hand, while the Trademark Examining Attorney argues that the term “Visions” is “extremely strong” in this field, and that registrant’s mark is entitled to “heightened protection,” we find that the record does not support this conclusion either. Accordingly, the du Pont factor assessing the number and nature of similar marks adopted for use with similar goods is a neutral factor in this case. We turn then to consider the similarity or dissimilarity of the marks when compared in their entireties in terms of appearance, sound, connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We are mindful of the fact that in cases such as this, where applicant’s goods are deemed to be closely related to the cited registrant’s goods, the degree of similarity between the marks that is required to support a finding of likely confusion is less than it would be if the goods were not so similar. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 Serial No. 77723718 - 6 - USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992). In adopting the mark, EXOTIC VISIONS, applicant has essentially taken registrant’s entire mark, VISIONS, and added the modifier, “Exotic.” Without doubt, this addition of the first word in a two-word mark creates obvious differences in appearance and sound. However, the determinative comparison in this case seems to be the similarities or dissimilarities as to connotations and commercial impressions. Applicant argues that the word “Exotic” is the dominant feature of its mark, and the Trademark Examining Attorney has made no counter argument that the word “Exotic” is merely descriptive as used within applicant’s composite mark. Rather, the Trademark Examining Attorney simply argues that in terms of creating a commercial impression, he believes that the word “Visions” remains the dominant portion of applicant’s mark. In the realities of the marketplace, we must consider the prospective consumer of applicant’s engineered wood flooring products who is already familiar with registrant’s laminate flooring. When this consumer sees a new composite mark where applicant has added the adjective “Exotic” to registrant’s mark, “Visions,” she will likely Serial No. 77723718 - 7 - think that EXOTIC VISIONS products are a related product line from registrant, perhaps with the promise of added charm from the unusual or unfamiliar. Finally, even if reasonable persons may disagree over the commercial impression created by applicant’s mark, under the circumstances of this case, the presumptions of Section 7(b) of the Trademark Act require that registrant’s mark be granted this scope of protection. That is, to the extent that we harbor any doubt as to the proper resolution of this case, we consider it appropriate to resolve such doubt against the newcomer and in favor of the prior registrant. See In re Pneumatiques, Caoutchouc Manufacture, 487 F.2d 918, 179 USPQ 729 (CCPA 1973). See also TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and In re Hyper Shoppes, 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988). Decision: The refusal to register under Section 2(d) of the Lanham Act is hereby affirmed.