Homeland Vinyl Products, Inc.

Trademark Trial and Appeal Board

Sep 26, 2006

No. 76361399 (T.T.A.B. Sep. 26, 2006)

Oral Hearing: June 29, 2006 Mailed: September 26, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Homeland Vinyl Products, Inc.
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Serial No. 76361399
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Robert J. Veal of Smith, Gambrell & Russell, LLP for Homeland
Vinyl Products, Inc.

David H. Stine, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
_______

Before Hohein, Grendel and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Homeland Vinyl Products, Inc., seeks to register
the mark shown below on the Supplemental Register for goods which
were ultimately identified as "non-metal fence rails" in Class
19.1 The application states that "the mark consists of the
configuration of a fence rail" and that "the lining in the mark

1 Application Serial No. 76361399, filed January 18, 2002, alleging a
date of first use and first use in commerce on January 11, 2002.
THIS DISPOSITION IS
CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76361399
2
is for shading purposes only and does not represent color."

The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act on
the ground that applicant's mark, when applied to
applicant's goods, so resembles the registered mark shown
below for "non-metal fence rails" in Class 192 as to be
likely to cause confusion.3

2 Registration No. 2828960, issued April 6, 2004 to Kroy Building
Products, Inc. The examining attorney also initially refused
registration under Section 2(d) on the basis of an additional
registration (No. 2837603) owned by the same entity. The refusal as to
that registration was subsequently withdrawn.

3 Applicant originally sought registration on the Principal Register
and filed an amendment to the Supplemental Register in response to an
initial refusal to register the mark on the grounds of functionality
and non-distinctiveness. In view of applicant's amendment to the
Supplemental Register, the refusal on the basis of non-distinctiveness
Serial No. 76361399
3

The registration issued under Section 2(f) of the Act. The mark
is described in the registration as follows:
The mark consists of a configuration of the bottom
portion of a fence rail bearing the exterior rounded
shoulders and the recessed edges. The diagonal
bands of vertical shading lines and other lining
shown in the drawing are not features of the mark
and are intended only to show perspective. The
broken lines indicate the placement of the mark on
the goods and are not features of the mark. The
drawing depicts a section of the product
configuration and no limitations on length or size
are intended.

is moot; and inasmuch as the functionality refusal was not maintained,
it is deemed withdrawn.
Serial No. 76361399
4
When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was held.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Both the application and the cited registration are for the
same goods, namely fence rails. Because the goods are identical,
and there are no restrictions in the identification of goods, we
must presume that the fence rails are sold in all normal trade
channels and to all normal classes of purchasers for such goods,
and that the channels of trade and classes of purchasers of
applicant's and registrant's goods are the same. See Hard Rock
Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998); and In
re Elbaum, 211 USPQ 639 (TTAB 1981). While there is no mention
in the record as to precisely what are the normal channels of
trade for fence rails or who the purchasers for those goods would
be, applicant did state at the oral hearing that the products
could be purchased at retail outlets such as The Home Depot.
Serial No. 76361399
5
Thus, we will assume the normal class of purchasers for the goods
include not only contractors and other commercial purchasers, but
also "do-it-yourself" homeowners and remodelers. However, fence
rails are not impulse purchases and the construction and
installation of a fence would require some level of knowledge and
experience. We thus would expect that such purchasers would
exercise a relatively high degree of care in their purchasing
decisions.
We turn then to the marks, keeping in mind that when marks
would appear on identical goods, the degree of similarity between
the marks necessary to support a finding of likely confusion
declines. Century 21 Real Estate v. Century Life, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992).
The marks are configurations of non-metal fence rails.
Fence rails are the horizontal portions of fence structures.4
The configurations in the application and registration are not
restricted to any particular size or length. Both fence rails
contain a recessed channel at one end which is used to hold the
upright vertical bars, panels or pickets of the fence. The rails

4 We take judicial notice of the relevant definition of "rail" as
meaning "a long horizontal or [for purposes of, e.g., a staircase]
sloping piece of wood, metal or other material that is used as a
barrier, support, or place to hang things. Microsoft Encarta College
Dictionary (2001); and "a bar or series of bars, typically fixed on
upright supports, serving as part of a fence ..." The New Oxford
American Dictionary (2d ed. 2005). The Board may take judicial notice
of dictionary definitions. See University of Notre Dame du Lac v. J.
C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 76361399
6
could be used as either the top rail or the bottom rail of the
fence depending on the orientation of the channel. The channel
appears at the top of the design in applicant's drawing and on
the bottom of the design in registrant's drawing. However, the
difference in orientation of the two marks is not significant
because the goods are not restricted in either the application or
registration for use as only a top or a bottom fence rail. Thus,
for ease of reference and comparison, we consider both marks to
be a top fence rail, that is, as the rail is oriented in
registrant's drawing with the channel appearing on the bottom
portion of the rail.
Applicant's mark consists of a configuration of the entire
fence rail and registrant's mark is described in the registration
as a configuration of "the bottom portion of a fence rail bearing
the exterior rounded shoulders and the recessed edges." It is
the examining attorney's position that although registrant
limits its trademark claim to a particular feature of the fence
rail, prospective consumers "will view the respective goods in
their entireties and will not be aware of the technical trademark
law distinction wherein registrant claims only a specific feature
of the product as a source indication." Relying on such cases as
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985) and Specialty Brands, Inc. v. Coffee Bean distributors,
Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984), the examining
Serial No. 76361399
7
attorney contends that this situation is analogous to a mark
incorporating disclaimed matter, noting that the disclaimed
matter in such marks is not disregarded in determining whether
two marks are confusingly similar.
The examining attorney further argues that even if the
analysis is focused only on the bottom portions of the rails, the
respective contours of the two products are "quite similar" and
that prospective consumers are unlikely to make any strong
distinction based on "this subtle, easily-overlooked difference."
The examining attorney contends that even a side-by-side
comparison of the marks "serves to reinforce the striking
similarity" between the marks.
Applicant contends that the examining attorney has
improperly based the determination of likelihood of confusion on
the similarity of "non-protected and non-protectable" portions of
the configurations which, according to applicant, disregards the
Supreme Court's caution against the over-extension of trade dress
protection. It is applicant's contention that when the marks are
viewed in their proper context they are not similar. As
described by applicant, the only portion of the fence rail that
registrant claims as a mark to identify the source of its fence
rails are the rounded shoulder and the recessed edges on the
exterior opposing sides of the rail, near the channel opening of
the rail. To support its position, applicant points to the
Serial No. 76361399
8
description of the mark both in the registration and in the
addenda to the declarations of James R. Spaulding and Steve
Bennett which were submitted by registrant in support of
registration.5 Applicant argues that its own mark, unlike
registrant's mark, has a linear diagonal line and does not
include a curved shoulder, nor does it include any recesses.
Applicant notes that registrant owns a design patent (No.
D490,543) covering the claimed mark, and has submitted copies of
certain pages of the patent document showing different views of
the object which, according to applicant, further illustrate what
applicant views as the differences in the two designs.
Applicant also argues that registrant's mark is entitled to
a very limited scope of protection. Applicant has submitted a
number of design and utility patents showing various
configurations of fence rails, asserting a "crowded field" of
product design. In addition, applicant has submitted the
declaration of Maurice Coen, a salesman with applicant and a
former employee of registrant, who states that he is familiar
with both marks; that he believes that the fence rail designs are
"distinctly different"; that "the profiles of both fences are
distinct"; that based on the differences between the fence rails,

5 These declarations were submitted by applicant for the first time
with its appeal brief. However, because the examining attorney has not
objected to this evidence as untimely, and moreover has addressed the
evidence on the merits in his brief, we have treated the evidence as
properly of record. See In re Nuclear Research Corp., 16 USPQ2d 1316,
1317, n. 2 (TTAB 1990).
Serial No. 76361399
9
he believes that consumers would not consider the designs to be
similar; and that "persons looking at an erected fence from the
road would notice the different appearance" of the two fence
rails.
Finally, applicant maintains that there has been no actual
confusion during the three-year period of concurrent use of the
marks and has submitted the declaration of Randy Heath,
applicant's president, attesting to the absence of actual
confusion during that time.
In determining the similarity or dissimilarity of marks, we
must as a general rule consider the marks in their entireties in
terms of sound, appearance, meaning and commercial impression.
See du Pont, supra. See also Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005). The marks in this case are product configurations and,
like pure design marks, are consequently not capable of being
spoken. Therefore, our analysis of the marks must be made solely
on the basis of a visual comparison of the two marks. Cf. In re
Burndy Corp., 300 F.2d 938, 133 USPQ 196 (CCPA 1962).
The question is what is the "entirety" of registrant's mark?
We disagree with the examining attorney's view that the entirety
of the mark encompasses the matter in broken lines. We find the
examining attorney's disclaimer analogy and the cases cited in
support of his position to be inapplicable here. Disclaimed
Serial No. 76361399
10
matter must be considered in determining the question of
likelihood of confusion because such matter actually forms part
of the mark. See Giant Food, Inc. v. Nation's Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) ("disclaimed
material still forms a part of the mark and cannot be ignored in
determining likelihood of confusion."). The portion of
registrant's mark shown in broken lines is not part of the
registered mark. Indeed, this matter is expressly excluded from
the registered mark.6 See, for example, TMEP §1202.02(d) ("The
matter that is shown in broken lines does not have to be
disclaimed, because it does not form part of the mark.") See
also In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91 (CCPA
1980) ("We, therefore, agree that appellant's container is an
unregistrable feature of the claimed mark. The examiner's
requirement to delete the design (or show it in dotted lines) was
entirely in order.").
As stated in the cited registration, the depiction of the
upper portion of the rail above the channel is included in the
drawing only to show perspective. By construing the mark as
including this matter for purposes of the likelihood of confusion
analysis, the examining attorney has improperly broadened

6 We make no determination as to whether the matter excluded from the
mark is functional or would otherwise be considered an unregistrable
feature of the registered mark. For example, applicant's mark was
found to be nonfunctional for the very features that applicant is now
claiming are functional in registrant's mark. We see no reason or need
to make assumptions about the protectability of the excluded matter.
Serial No. 76361399
11
registrant's rights in the mark and has given registrant
protection for matter that is not part of its registered mark.
Registrant's entire mark is the flourish on the lowermost portion
of the outer edges of the rail channel, a very limited and
specific portion of the entire fence rail. This is the only
portion of the overall product configuration that is protected by
the registration. Therefore, in our analysis, we must consider
only the flourish as registrant's mark, as it is shown in the
registration, and we will not consider the overall product shape
on which the mark might be used.
We turn then to the appropriate comparison between the
marks, with certain considerations in mind. First, it is the
overall visual impression of the marks derived from viewing the
marks in their entireties that is controlling rather than an
analysis of the specific details. See Dan Robbins & Associates,
Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100 (CCPA 1979).
The marks are similar in their placement on the product and to
the extent that they both have a slight taper at the lower lip of
the channel on either side of the channel opening. However, we
find that the visual differences in the marks are more
significant than the similarities. The overall impression of
registrant's mark is soft, curved and rounded, and the overall
impression of applicant's flourish is severe, angular and linear.
Based on the total effect of the respective marks, rather than
Serial No. 76361399
12
their individual features, we find that the differences in the
marks are sufficient to distinguish them.
We must also consider the marks in their proper context,
that is, as the product shapes would be encountered by purchasers
in the actual marketing environment, including their proper
visual scale. It is obvious that the drawing is not
representative of the actual size or length of the rails. In
actual use the rails are much larger and the respective
flourishes are more visible and noticeable, which, in turn, would
make the differences in the designs more noticeable, as well. We
note, in this regard, Mr. Coen's statement that the respective
designs are noticeable from a distance on "an erected fence from
the road."
Moreover, in view of the nature of the ornamental design, it
appears, in this particular situation, that the registered mark
is entitled to only a narrow scope of protection. The design and
utility patents for fence rails show that the rails are often
constructed with a channel at one end to receive fence panels.
We also note that at least two of the design patents of record
(Nos. D500,866; and D497,432) cover what appear to be subtle
flourishes at the channel end of the rail, suggesting that it is
not particularly unique or unusual to place an ornamental design
on this portion of the rail, and that purchasers of fence rails
Serial No. 76361399
13
would be accustomed to making distinctions based on more subtle
differences in the marks.7
In view of the foregoing, we find, notwithstanding the
identity of the goods, that considering the narrow scope of
protection to which registrant's mark is entitled and the
relative sophistication of the purchasers for the goods, the
marks are sufficiently dissimilar to avoid a likelihood of
confusion.8
Decision: The refusal to register under Section 2(d) of the
Trademark Act is reversed.

7 We recognize that patents are not evidence of actual use. See, e.g.,
McCarthy § 6:11 (2006) ("...the owner of a design patent need not have
commercialized or sold the patented design."). However, we also note
that, at least in the context of determining functionality, the Federal
Circuit, in In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629, 1632
(Fed. Cir. 2003), held that design patents similar to that of the
applicant's design were sufficient evidence that consumers would not
find applicant's design unique or unusual even without evidence of
actual use of the patented designs.

8 In making this determination, we have given little probative weight
to applicant's evidence and arguments concerning the lack of actual
confusion. Without evidence of the nature and geographic extent of
both applicant's and registrant's use of their respective marks, we
cannot determine whether a meaningful opportunity for actual confusion
has ever existed. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768 (TTAB 1992). Cf. In re General Motors Corp., 23 USPQ2d 1465 (TTAB
1992).