Hudson Salvage, Inc.

Trademark Trial and Appeal Board

Nov 16, 2004

No. 76453963 (T.T.A.B. Nov. 16, 2004)

Mailed:
November 16, 2004
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hudson Salvage, Inc.
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Serial No. 76453963
_______
W. Whitaker Rayner of Watkins Ludlam Winter & Stennis, P.A.
for Hudson Salvage, Inc.
Robert Coggins, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Simms, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Hudson Salvage, Inc. seeks registration on the
Principal Register of the mark DIRT CHEAP for services
identified in the application, as amended, as follows:
“Retail department store services,
specifically excluding the sale of beer,
liquor and cigarettes,” in International
Class 35.1
This case is now before the Board on appeal from the final
refusal of the Trademark Examining Attorney to register
1 Application Serial No. 76453963 was filed on September 30,
2002 based upon applicant’s allegation of use of the mark in
commerce since at least as early as December 31, 1993.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76453963
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this mark based upon Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d). The Trademark Examining Attorney has held
that applicant’s mark, when used in connection with the
recited services, so resembles the mark DIRT CHEAP
registered for services recited as “wholesale
distributorship, on-line and retail store services
featuring beer, liquor and cigarettes,” also in
International Class 35,2 as to be likely to cause confusion,
to cause mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case. Applicant did not request an oral
hearing before the Board.
We affirm the refusal to register.
In arguing for registrability, applicant contends that
these retail store services are distinct and represent
different channels of trade; that this term is used widely
by third parties and hence is a relatively weak mark
entitled to a narrow scope of protection; and that an
affidavit of applicant’s representative speaks to ten years
of contemporaneous usage without a single known incident of
actual confusion.
2 Reg. No. 2613728 issued to D.C., Inc., on September 3, 2002
alleging a date of first use in commerce at least as early as
January 1993.
Serial No. 76453963
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By contrast, the Trademark Examining Attorney argues
that the marks are identical; that evidence in the record
shows that applicant’s recited services are closely related
to those of registrant; and that applicant’s claim of an
absence of actual confusion is entitled to little probative
value in the context of this ex parte appeal.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing upon the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
As to the du Pont factor focusing on the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound and connotation, there is no question but
that the marks are identical in every respect. Hence, with
both registrant and applicant using the identical
designation, “the relationship between the goods [or
services] on which the parties use their marks need not be
as great or as close as in the situation where the marks
Serial No. 76453963
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are not identical or strikingly similar.” Amcor, Inc. v.
Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981). See
also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1689 (Fed. Cir. 1993) (“[E]ven when goods or services are
not competitive or intrinsically related, the use of
identical marks can lead to an assumption that there is a
common source”).
Accordingly, we turn to the similarity or
dissimilarity and nature of the goods as described in the
application and cited registration. As applicant points
out, registrant’s retail store services are restricted by
the words of the recitation to the retail sale of
cigarettes and alcoholic beverages. However, while it is
clear that these two recitations provide for no overlap,
this fact alone is not determinative herein on the question
of likelihood of confusion under Section 2(d) of the Act.
Applicant’s recited retail services are offered in
department stores and specifically exclude the sale of
cigarettes and alcoholic beverages, while the services
recited in the registration are limited to the sale of
cigarettes and alcoholic beverages. Although applicant
amended its recitation of services explicitly to preclude
any overlap with registrant’s recited services, it is well
Serial No. 76453963
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established that it is not necessary that the goods or
services of the parties be similar or competitive, or even
that they move in the same channels of trade, in order to
support a holding of likelihood of confusion. It is
sufficient that the respective goods or services are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods or
services are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, the Trademark Examining Attorney has
made of record a number of third-party registrations which
show that a number of third-party retailers have registered
marks for both general merchandise typically found in
department stores as well as for cigarettes and/or liquor.
See, for example, Reg. No. 2484642 for, inter alia, retail
department store services featuring general merchandise and
cigarettes.
Although third-party registrations are not evidence
that the marks shown therein are in commercial use, or that
Serial No. 76453963
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the public is familiar with them, nevertheless third-party
registrations which individually cover a number of
different items and which are based on use in commerce may
have some probative value to the extent that they serve to
suggest that the listed goods and/or services are of a type
which may emanate from a single source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
These registrations, thus, serve to demonstrate that
services of the type identified in applicant’s application
and the cited registration can emanate from the same
source, and be offered under the same mark.
This evidence is also corroborated with evidence that
the Trademark Examining Attorney has drawn from the
LEXIS/NEXIS database:
HEADLINE: District Crime Watch
H St., 700 block, 4 p.m. Feb. 7. A man
entered a department store, pointed a gun at
a person’s head and robbed the store of
three cartons of cigarettes and cash.
The Washington Post, February 21, 2002.
HEADLINE: Police Report
A man was arrested after he was alleged to
have concealed cigarettes, underwear and a
package of bed sheets under his coat and
left the Meijer department store, 855 S.
Randall Rd., without paying. Police said
Dean Bockman, 36, of the 100 block of South
3rd Street was charged with retail theft.
Chicago Tribune, January 14, 2003.
Serial No. 76453963
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HEADLINE: Letters to the Editor
I personally have been approached on Wood
Street to purchase cigarettes or incense or
cologne that had been appropriated at local
department stores and contained their
respective store labels. I think the tax
increase will just increase the black market
for cigarettes in the state and force people
to look elsewhere to satisfy their habit.
Pittsburgh Post Gazette, June 11, 2002.
HEADLINE: Downtown Will Adapt and Thrive
My dad has worked for more than 25 years as
retail manager for a combination
pharmacy/liquor store/gift shop/department
store in “beautiful downtown Yankton,” as he
calls it. That store, Yankton Drug, had
already been a downtown landmark for years
when the Yankton Mall opened in 1969.
The Desert News (Salt Lake City, UT), May 13,
2002.
HEADLINE: Musical’s Webb City Memories
When Webb’s City began discounting items
featured by Rutland’s, the leading
department store, the latter countered by
discounting cigarettes. The “war” got down
to a penny a pack, and ended as both stores
offered a free pack with any purchase.
Sarasota Herald-Tribune, July 28, 2001.
HEADLINE: When You Sing a Song You Can Rise Up
Kitchenware, liquor, cookies and clothes –
albeit cheaply made ones – line department
store shelves.
Los Angeles Times, October 25, 2000.
HEADLINE: Police Blotter
LARCENY: At an area department store, an
unknown subject reportedly left with $52.69
in cigarettes. Office: Joseph DeSeve, Jr.
The Times Union (Albany NY), August 9, 2000.
Further, even though the retail store services recited
in the registration would be limited to the sale of
Serial No. 76453963
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cigarettes and alcoholic beverages, consumers acquainted
with registrant’s services are certainly going to encounter
both kinds of services. That is, individuals who would be
the consumers of cigarettes and alcoholic beverages would
also be prospective purchasers of general merchandise
offered in applicant’s retail department stores. Moreover,
both applicant and registrant would appear to be marketing
inexpensive items that fall under the category of “impulse
items” to the same class of ordinary consumers.
Hence, we find that applicant’s and the registrant’s
identified services are closely related, and that the
public is likely to believe, if they were offered under the
same mark, that they emanate from the same source.
As to the du Pont factor focusing on the number and
nature of similar marks in use on similar goods and
services, applicant has listed in its reply brief four
third-party registrations having composite marks consisting
in part of the term “Dirt Cheap.” Applicant justifies this
tardy attempt to place these registrations into the record
by saying the Trademark Examining Attorney for the first
time had made an issue of the strength of the mark DIRT
CHEAP” in his appeal brief. We reject this argument by
applicant.
Serial No. 76453963
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The Trademark Examining Attorney, in pointing out ever
so briefly that the marks are identical, included a single
sentence that seems to have been directed to the
connotation of the shared term (brief, p. 4): “DIRT CHEAP
is a recognized English compound word meaning ‘exceedingly
cheap.’[with a footnote citation to Merriam-Webster’s
Collegiate Dictionary].” This statement is likely not even
essential in his discussion of the identical commercial
impressions created by applicant’s and registrant’s marks,
and certainly does not open the door to applicant’s trying
to get into the record, by way of its reply brief, evidence
from the federal trademark register on the number and
nature of similar marks in use on similar goods and
services.
Accordingly, we have not considered this proffer of
third-party registrations as they were neither timely nor
properly made of record.
It is well established that the Board does not take
judicial notice of registrations that reside in the United
States Patent and Trademark Office, and that the submission
of a list of registrations is insufficient to make them of
record. See In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
Serial No. 76453963
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Moreover, Trademark Rule 2.142(d)3 provides that the record
in an application should be complete prior to appeal and
that the Board will ordinarily not consider late-filed
evidence. Hence, in reaching our decision, we have not
considered the listing contained in applicant’s reply
brief.
In any event, we hasten to add that even if the third-
party registrations had been considered, it would not have
persuaded us to reach a different conclusion in this
appeal. Third-party registrations, by themselves, are not
entitled to much weight in determining whether confusion is
likely. See In re Hub Distributing, Inc., 218 USPQ 284
(TTAB 1983). Such registrations are not evidence of what
happens in the marketplace or that the public is so
familiar with the use of such marks that the other elements
are emphasized in order to allow purchasers to distinguish
among such marks. National Aeronautics and Space
Administration v. Record Chemical Co., 185 USPQ 563 (TTAB
3 “(d) The record in the application should be complete prior
to the filing of an appeal. The Trademark Trial and Appeal Board
will ordinarily not consider additional evidence filed with the
Board by the appellant or by the examiner after the appeal is
filed. After an appeal is filed, if the appellant or the
examiner desires to introduce additional evidence, the appellant
or the examiner may request the Board to suspend the appeal and
to remand the application for further examination.” 37 C.F.R.
§2.142(d).
Serial No. 76453963
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1975). See also AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973) [third-party
registrations do not establish that the marks shown therein
are in use, much less that consumers are so familiar with
them that they are able to distinguish among such marks].
Thus, applicant has not shown that the registered mark is
entitled to a narrow scope of protection. Moreover, even
weak marks are entitled to protection against registration
by a subsequent user of the same or similar mark for the
same or closely related goods or services. See Hollister
Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB
1976).
Furthermore, even if we had proof that these marks
were used on the goods and services listed in each
registration, these registrations would not support the
conclusion that the cited mark is a weak trademark for
retail store services. Some of the marks convey different
commercial impressions than applicant’s mark (e.g., LIVING
A FULL LIFE DIRT CHEAP), or reflect marks registered for
goods (e.g., magazines and computer hardware and software)
and services (e.g., travel agency and car rental services)
quite different from the services involved herein.
Serial No. 76453963
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Finally, we turn to the du Pont factor focusing on the
length of time during and conditions under which there has
been concurrent use without evidence of actual confusion.
Applicant asserts that it and the registrant have used
their marks concurrently for more than ten years without
any evidence of actual confusion, and that this shows that
confusion is not likely to occur. We are not persuaded by
this argument. Rather, we agree with the Trademark
Examining Attorney that the affidavit alleging that
applicant is unaware of any instances of actual confusion
during this period is not determinative herein.
The test under Section 2(d) of the Lanham Act is
likelihood of confusion, not actual confusion. Moreover,
aside from the facts that we do not know what the
registrant’s level of usage and promotion of its mark has
been or whether the registrant has encountered any
confusion, we have no information regarding the amount or
geographic area of applicant’s sales or its level of
advertising such that we could ascertain whether there has
been an opportunity for confusion to occur.
Finally, while solid evidence of actual confusion is
the best evidence of likelihood of confusion, any confusion
about mutual sponsorship or affiliation is notoriously
Serial No. 76453963
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difficult to obtain and would not necessarily be brought to
the attention of either applicant or registrant. See In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003) [“The lack of evidence of
actual confusion carries little weight … especially in an
ex parte context”]. Accordingly, while examples of actual
confusion may point toward a finding of a likelihood of
confusion, an absence of such evidence is not as compelling
in support of a finding of no likelihood of confusion.
Thus, we cannot conclude from the lack of instances of
actual confusion that confusion is not likely to occur, and
we find this to be a neutral factor in our balancing of the
du Pont factors herein.
In conclusion, we find that given the use of identical
marks on these related services, the extent of potential
confusion herein is substantial.
Decision: The refusal to register based upon a
likelihood of confusion with the cited registration is
hereby affirmed.