Global Total Office

Trademark Trial and Appeal Board

Feb 23, 2001

No. 75600227 (T.T.A.B. Feb. 23, 2001)

2/23/01 Paper No. 10
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Global Total Office1
________
Serial No. 75/600,227
_______
Judith L. Grubner of Laff, Whitesel & Saret, Ltd. for
Global Total Office.
Heather D. Thompson, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
_______
Before Chapman, Holtzman and Rogers, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Global Total Office (a Canadian limited partnership)
has filed an application to register the mark
ADAPTABILITIES for “office furniture” in International
Class 20. The application is based on applicant’s claimed
first use date of June 1998. Applicant also claims
priority under Section 44(d) of the Trademark Act, 15
U.S.C. §1126(d) based on its Canadian application Serial
1 The records of the Assignment Branch of this Office indicate
that the involved application has been assigned from Global
Upholstery Company to Global Total Office. (Reel 2153, Frame
620.)
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/600,227
2
No. 881,803 (filed in Canada on June 18, 1998), and which
matured into Canadian Registration No. 512,375.
Registration was refused under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to its identified goods, so
resembles the registered mark, ADAPTABLES, for “furniture,”
as to be likely to cause confusion, mistake or deception.2
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested. We affirm the refusal to register. In reaching
this conclusion, we have considered all of the relevant du
Pont3 factors.
We turn first to a consideration of the cited
registrant’s goods and applicant’s goods. It has been
repeatedly held that when evaluating the issue of
likelihood of confusion in Board proceedings regarding the
registrability of marks, the Board is constrained to
compare the goods (or services) as identified in the
application with the goods (or services) as identified in
the registration. See In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Octocom Systems
2 Registration No. 2,249,513, issued June 1, 1999. The claimed
date of first use is February 4, 1977.
3 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Ser. No. 75/600,227
3
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial Bank of
Commerce, National Association v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Applicant’s identification of goods clearly sets forth
a specific type of furniture, namely “office furniture”;
however, the cited registrant’s goods, identified as
“furniture,” covers all types of furniture, including
“office furniture.”4 While applicant’s identification of
goods is limited to “office furniture,” there is no such
limitation in the registrant’s identification of goods.
Thus, the cited registration encompasses the more specific
furniture set forth in applicant’s identification.
In any event, it is well settled that goods or
services need not be identical or even competitive in order
to support a finding of likelihood of confusion. Rather,
it is sufficient that the goods or services are related in
4 The Examining Attorney submitted a page from a third-party
website referring to the cited registrant as selling “office
furniture.” We agree with applicant that this evidence does not
establish that registrant would refer to its goods in that
manner. However, the Examining Attorney’s evidence does indicate
that the term “office furniture” may refer to either a typical
business office or an office or computer room in the home.
Another evidentiary matter is applicant’s submission, with its
reply brief, of pages from a portion of registrant’s website.
This evidence is untimely and has not been considered. See
Trademark Rule 2.142(d). We hasten to add that consideration of
this evidence would not alter our decision.
Ser. No. 75/600,227
4
some manner or that the circumstances 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 the goods or services originate from or are in
some way associated with the same producer, or that there
is an association between the producers of the goods or
services. See In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
Here there is no restriction as to the channels of
trade or the types of purchasers in either the application
or the registration. See Canadian Imperial Bank v. Wells
Fargo Bank, supra. Therefore, the Board must assume that
applicant’s goods could move through all the ordinary and
normal channels of trade for such goods, and would be
offered to all the usual purchasers (including the general
public) for such goods. See Octocom Systems Inc. v.
Houston Computer Services Inc., supra, at 1787; In re Smith
and Mehaffey, 31 USPQ2d 1531 (TTAB 1994); and The Chicago
Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB
1991).
Based on the record before us, we readily conclude
that applicant’s goods, as identified, are closely related
Ser. No. 75/600,227
5
to the cited registrant’s broadly identified goods, and
would be sold through similar channels of trade to the same
class of purchasers.
Applicant argues that home and office furniture
products are “relatively expensive” (brief p. 8, and reply
brief p. 4) and are not impulse purchases. Even if we
assume that the purchasers of the goods in question in the
instant case are somewhat careful purchasers, and do not
purchase furniture on impulse, 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. See Weiss Associates Inc. v. HRL Associates Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990); and Aries
Systems Corp. v. World Book Inc., 23 USPQ2d 1742, footnote
17 (TTAB 1992).
Turning then to a consideration of the marks,
applicant’s mark ADAPTABILITIES and registrant’s mark
ADAPTABLES, although obviously not identical, are similar
in sound, connotation and commercial impression. The
proper test in determining likelihood of confusion is not a
side-by-side comparison of the marks, but rather must be
based on the similarity of the general overall commercial
impressions engendered by the involved marks.
Ser. No. 75/600,227
6
The fact that the marks are somewhat different coined
words does not serve to distinguish these marks which are
particularly similar in sound and connotation. Purchasers
are unlikely to remember the specific differences between
the marks due to the recollection of the average purchaser,
who normally retains a general, rather than a specific,
impression of the many trademarks encountered. That is,
the purchaser’s fallibility of memory over a period of time
must also be kept in mind. See Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573
(CCPA 1973); and Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir., June
5, 1992).
Moreover, it is the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and be
remembered by the purchaser. See Presto Products Inc. v.
Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
In this case, both marks begin with “adapt.” This
certainly plays a part in creating the similarity of the
overall commercial impression of these marks.
The connotation created by both marks, ADAPTABILITIES
and ADAPTABLES, is the same for both parties in relation to
the goods. That is, both refer to the versatility or
adaptability of the furniture--either that each individual
Ser. No. 75/600,227
7
piece of furniture might adapt to various uses, or the
furniture consists of components which may be utilized
together in various configurations. See The Wella
Corporation v. California Concept Corporation, 558 F.2d
1019, 194 USPQ 419 (CCPA 1977).
Applicant’s argument regarding the scope of protection
to be afforded the registered mark is unpersuasive.5
Applicant made clear that it was not asserting the third-
party registrations as involving goods similar to those at
issue in this case, but rather applicant submitted the
third-party listings “to bring this case within the holding
in Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 205
USPQ 968, 975 (5th Cir. 1980) (Applicant’s Brief at 4-5),
which approves the use of registrations for unrelated goods
and services to show that a particular mark should be given
5 Mere typed listings of third-party registrations are not an
appropriate way to enter such material into the record. See In
re Duofold Inc., 184 USPQ 638 (TTAB 1974); and Weyerhaeuser Co.
v. Katz, 24 USPQ2d 1230 (TTAB 1992). Applicant simply referred
to some third-party registrations in its response to the first
Office action; and the Examining Attorney did not mention them in
her Final Office action. See TBMP §1207.01 and 1207.03. In
applicant’s brief on appeal, it submitted photocopies of the
results of two searches conducted on the USPTO Trademark Text and
Image Database--one a list of 88 registrations or applications
which include the word “adapt” in the mark, and one a list of 11
registrations or applications which include the letters “adapta”
in the mark. (Both lists set forth only the registration or
application numbers and the marks.) The Examining Attorney noted
the untimeliness of this evidence, but stated she would
nonetheless address the merits thereof. Thus, the submission
with applicant’s brief has been considered by the Board.
Ser. No. 75/600,227
8
a limited scope of protection.” (Applicant’s reply brief,
p. 2.) The issues in that case are distinguishable from
the question of registrability at issue in this case before
the Board in many ways. First, that civil action involved
a suit for trademark infringement, unfair competition,
violation of the Georgia anti-dilution statute, and other
such claims. Second, the marks involved were the English
words “Domino” or “Domino’s.” Third, defendant had
introduced into evidence at trial 72 third-party
registrations of the mark “Domino” for a wide variety of
products, and “extensive evidence of 15 third-party uses of
the ‘Domino’ mark from 1885 until the present.” Amstar v.
Domino’s, supra, 205 at 979. Suffice it to say that the
Amstar case is inapposite here where the nature of the
marks involved as well as the nature and extent of the
third-party registrations and uses is vastly different from
that in the Court case.
Applicant’s listing of third-party registrations from
the USPTO database for marks which include the letters
“adapt” or “adapta” do not indicate the goods and/or
services, but applicant argues in its brief that seven
(including the one applicant asserts it owns – ADAPT for
office furniture, namely chairs) are for related goods,
namely ADAPTA-MEDIA for office furniture; ADAPTAFILE for
Ser. No. 75/600,227
9
filing cabinets; ADAPTALAB for laboratory furniture;
ADAPTOR for furniture, namely, library furniture used as
computer workstations; ADAPTABAK for a self-inflating pad
or cushion for back or postural support; and ADAPT’R for
point of purchase displays, namely plastic sign holders.
Third-party registrations are of little weight in our
determination of likelihood of confusion as they are not
evidence of use of the marks shown therein and they are not
proof that consumers are familiar with them so as to be
accustomed to the existence of similar marks in the
marketplace. See Helene Curtis Industries Inc. v. Suave
Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Moreover, third-
party applications are of virtually no evidentiary value.
While the Patent and Trademark Office strives for
consistency, each case must be decided on its own facts and
record. Of course, we do not have before us any
information from the third-party application or
registration files.
Even if applicant had shown that the cited mark is
weak (which it did not), such marks are still entitled to
protection against registration by a subsequent user of the
same or similar mark for the same or related goods. See
Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439
(TTAB 1976).
Ser. No. 75/600,227
10
Applicant cites the case of Plus Products v. Natural
Organics, Inc., 204 USPQ 773 (TTAB 1979) regarding third-
party registrations of similar marks as evidence showing a
lack of likelihood of confusion. We find this case is also
inapposite here. In that case involving the likelihood of
confusion between applicant’s mark NATURE’S PLUS for
vitamins and opposer’s mark PLUS for vitamins, food
supplements, and the like, applicant had introduced
numerous third-party registrations, essentially all for
related products, i.e., vitamins or food supplements. The
Board also considered that applicant’s mark, NATURE’S PLUS,
consisted of two words which created a “unitary”
expression, and would be so perceived by purchasers. In
the application now before us applicant submitted lists
that do not include information as to the goods and/or
services, ownership, etc. Moreover, many of the third-
party marks which include either “adapt” or “adapta” create
many separate and differing commercial impressions.
Applicant’s assertion that it owns a registration for
the mark ADAPT (for “office furniture, namely, chairs”) is
not relevant to the issue of likelihood of confusion
between applicant’s applied-for mark and the cited
registered mark because applicant cannot rely upon a family
of marks in seeking registration of this particular mark.
Ser. No. 75/600,227
11
See In re U.S. Plywood-Champion Papers, Inc., 175 USPQ 445
(TTAB 1972). See also, Baroid Drilling Fluids Inc. v. Sun
Drilling Products, 24 USPQ2d 1048 (TTAB 1992).
While we have no doubt in this case, if there were any
doubt on the question of likelihood of confusion, it must
be resolved against the newcomer, as the newcomer has the
opportunity of avoiding confusion and is obligated to do
so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d
1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
is affirmed.