Conleasco, Inc.

Trademark Trial and Appeal BoardJul 7, 2010

No. 77485896 (T.T.A.B. Jul. 7, 2010)

Mailed: July 7, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Conleasco, Inc. ________ Serial No. 77485896 _______ Gregory C. Golla of Merchant & Gould, P.C. for Conleasco, Inc. Christopher L. Buongiorno, Trademark Examining Attorney, Law Office 102 (Karen M. Strzyz, Managing Attorney). _______ Before Hairston, Cataldo and Ritchie, Administrative Trademark Judges. Opinion by Hairston, Administrative Trademark Judge: Conleasco, Inc. has filed an application to register the mark BECKER FURNITURE WORLD (in standard character form; FURNITURE is disclaimed) for services ultimately identified as “retail store services in the field of furniture, home furnishings, and rugs, window treatments, THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77485896 2 gas fireplaces, paint, flooring and sinks, bathtubs, showers, and toilets” in International Class 35.1 Registration has been finally refused pursuant to Trademark Act §2(d), 15 U.S.C. §1052(d), on the ground that applicant’s mark so resembles the mark STUDIOBECKER in Registration No. 24219142 for “kitchen, living room, bathroom, dining room and bedroom furniture; wall components, namely, shelving and furniture, kitchen, bathroom and medicine cabinets, sold separately or as a unit; and room dividing furniture made of wood, metal, synthetic or laminate materials” in International Class 20, as to be likely, if used on or in connection with the identified goods, to cause confusion, to cause mistake, or to deceive. Applicant and the examining attorney have filed briefs on the issue under appeal. We affirm the refusal. Our determination under Trademark Act §2(d) is based upon an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E.I. du Pont de Nemours and 1 Application Serial No. 77485896, filed on May 29, 2008, based upon applicant’s assertion of its bona fide intent to use the mark in commerce. 2 Issued on January 16, 2001, renewed. Serial No. 77485896 3 Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); 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 considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999), and cases cited therein. We review the relevant du Pont factors as they apply to this case. We first turn to a consideration of the du Pont factor of the similarity or dissimilarity of the goods and/or services. It is not necessary that the respective goods and/or services be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is sufficient that the goods and/or services are related in some manner, or that the circumstances Serial No. 77485896 4 surrounding their marketing are such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source, or that there is an association or connection between the sources of the respective goods and/or services. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re International Telephone & Telegraph Corp., 197 USPQ2d 910 (TTAB 1978). In addition, the issue of likelihood of confusion is determined on the basis of the goods and services as set forth in the involved application and the cited registration, and not in light of what such goods and services are asserted to actually be. See e.g., Octocom Systems, Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Thus, where applicant’s and registrant’s goods and services are broadly identified as to their nature and type, it is presumed in each instance that in scope the application and registration encompass not only all the goods and services of the type Serial No. 77485896 5 described therein, but that the identified goods and services move in all channels of trade which are normal for those goods and services and that they would be purchased by all potential buyers thereof. See, e.g., In re Elbaum, 211 USPQ 639 (TTAB 1981). Applying these principles to the goods and services in this case, we find that, at the very least, applicant’s retail store services in the field of furniture and home furnishings are related to registrant’s living room, dining room and bedroom furniture. It is well-settled that confusion is likely to result from the use of the same or similar mark for goods, on the one hand, and for services involving those goods, on the other hand. In this case, retail store services in the field of furniture and home furnishings may involve the sale of living room, dining room and bedroom furniture. Thus, we find that applicant’s retail store services in the field of furniture and home furnishings are sufficiently related to registrant’s living room, dining room and bedroom furniture, that when offered under the same or similar marks, confusion is likely to occur.3 See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 3 Likelihood of confusion may be found if there is likelihood of confusion between any of the applicant’s services and any of the goods in the cited registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1988). Serial No. 77485896 6 6 USPQ2d 1025 (Fed. Cir. 1988) [BIGG’S (stylized) for retail grocery store services and general merchandise store services held likely to be confused with BIGGS and design for furniture]; In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) [design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream]; and Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) [STEELCARE for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories]. Insofar as the channels of trade and classes of purchasers are concerned, in the absence of any limitations in the respective identifications of goods and services, we find that the channels of trade and purchasers are overlapping. Applicant contends that the channels of trade are different because registrant’s goods are sold exclusively within kitchen stores. However, there is no such limitation in registrant’s identification of goods and we do not read limitations into the identifications of the goods and services. In sum, we find that the applicant’s services and registrant’s goods are related, that the trade channels and purchasers are overlapping, and that when the respective Serial No. 77485896 7 goods and services are offered under the same or similar marks, confusion is likely to result. Turning then to the marks, we must determine whether applicant’s mark and registrant’s mark, when compared in their entireties, are similar or dissimilar in terms of sound, appearance, connotation and commercial impression. Although the marks must be compared in their entireties, it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (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 overall commercial impression that confusion as to the source of the goods and services offered under the respective marks is likely to result. The focus is on the recollection of the average consumer 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). Applying these principles in the present case, we find that the dominant portion of each mark is the word BECKER. Serial No. 77485896 8 Insofar as applicant’s mark BECKER FURNITURE WORLD is concerned, the wording FURNITURE WORLD is less significant than BECKER because of the informational nature of the phrase. With respect to registrant’s mark STUDIOBECKER, the word STUDIO, as applied to furniture items, would be seen as merely a suggestive modifier of the word BECKER indicating a connection with a design studio. In this regard, we note that the examining attorney submitted examples of three uses of “Studio” in third-party websites, i.e., “Castlewood Furniture Studios,” “Mennonite Furniture Studios,” and “Marlin [Home and Office Furniture] Studios.” In addition, we judicially notice that “studio” is defined as, inter alia, “[a]n artist’s workroom.” The American Heritage Dictionary of the English Language (4th ed. 2009).4 Thus, we accord more weight to the word BECKER in our comparison of applicant’s mark and registrant’s mark. Comparing the marks in terms of appearance and sound, we find that they are more similar than dissimilar due to the presence of the word BECKER in both of them. In terms of connotation, we find that the presence of 4 It is well settled that the Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 77485896 9 the informational wording FURNITURE WORLD in applicant’s mark and the modifier STUDIO in registrant’s mark lend slightly different connotations to the marks. However, we find that the similarity in the connotation resulting from the presence of the word BECKER in both marks outweighs any difference in connotations. In terms of overall commercial impression, we find, again, that the marks are similar because they both convey that BECKER is the source of related retail store services featuring furniture and home furnishings and individual furniture items. This similarity in the source-indicating commercial impression created by both marks is not altered by the presence of FURNITURE WORLD in applicant’s mark and STUDIO in registrant’s mark. Rather, purchasers familiar with registrant’s living room, dining room, and bedroom furniture identified by the mark STUDIOBECKER are likely, upon encountering applicant’s retail store services in the field of furniture and home furnishings identified by the mark BECKER FURNITURE WORLD, to mistakenly believe that applicant’s retail store services in the field of furniture are related in some manner to registrant’s individual furniture items. In particular, purchasers could mistakenly believe due to the similarity in the commercial impression formed by each mark, that STUDIOBECKER is a line Serial No. 77485896 10 of furniture available through the BECKER FURNITURE WORLD retail stores. For the above reasons, we find that applicant’s mark BECKER FURNITURE WORLD and registrant’s mark STUDIOBECKER are similar when viewed in their entireties. Two arguments made by applicant require comment. First, applicant argues that various BECKER marks are in use and coexist on the register. In support of this argument, applicant submitted three third-party registrations that include BECKER and seven examples of uses of “Becker” in third-party websites. Insofar as the third-party registrations are concerned, they are not proof that consumers are familiar with such marks so as to be accustomed to the existence of the same or similar marks in the marketplace. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson- Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). Further, the marks in two of the registrations (BECKERMANN in Registration No. 1696111 and STROMBECKER in Registration No. 652689) are not as similar to registrant’s mark as is applicant’s mark. In addition, the mark in the remaining registration (GUSTAV BECKER in Registration No. 3454450) covers goods, i.e., clocks and watches, which are unrelated to the goods and services involved herein. To Serial No. 77485896 11 have any relevance, the marks must cover goods or services similar to the ones involved in the appeal. With respect to the uses of “Becker” in the third- party websites, our primary reviewing court, the Court of Appeals for the Federal Circuit, has stated, “[t]he probative value of third-party trademarks depends entirely upon their usage.” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). The record is devoid of any evidence of the purchasing public’s awareness of such uses; nor is there any information as to, for example, how long the websites have been operational or the extent of public exposure to the sites. Where the “record includes no evidence about the extent of [third-party] uses … the probative value of this evidence is minimal.” Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1561 (Fed. Cir. 2001). Further, at least four of the uses (i.e., the websites of Becker Cabinet Hardware, Becker College, Becker, Minnesota, and Becker, New Mexico) are obviously different from the goods and services involved herein, and are of virtually no probative value. Second, applicant argues that it is aware of no instances of actual confusion occurring as a result of the contemporaneous use of the marks of applicant and Serial No. 77485896 12 registrant.5 While a factor to be considered, the absence or presence of actual confusion is of little probative value where we have little evidence pertaining to the nature and extent of use by applicant and registrant. Moreover, the test under Section 2(d) is not actual confusion, but likelihood of confusion. See In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003) [“uncorroborated statements of no known instances of actual confusion are of little evidentiary value.”]. In view of the foregoing, and resolving any doubt as we must in favor of the prior registrant, we find that a likelihood of confusion exists between applicant’s mark and registrant’s mark. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984). Decision: The refusal to register is affirmed. 5 Although the application was filed based on intent-to-use, applicant states that it has “use[d] BECKER as part of its name and mark” for “many years.” (Response filed 3/10/09).