Hunter Douglas Industries Switzerland GmbH

Trademark Trial and Appeal BoardMar 15, 2012

No. 77531925 (T.T.A.B. Mar. 15, 2012)

Mailed: March 15, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Hunter Douglas Industries Switzerland GmbH ________ Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 _______ Scott S. Havlick and Michael J. Burke of Holland & Hart LLP for Hunter Douglas Industries Switzerland GmbH. Jeffrey S. DeFord, Trademark Examining Attorney, Law Office 115 (John Lincoski, Managing Attorney). _______ Before Seeherman, Bergsman and Ritchie, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Hunter Douglas Industries Switzerland GmbH (hereinafter “applicant”) filed a use-based application for the mark WHISPER, in standard character form, for “window blinds made of woven and non-woven and/or synthetic material; window shades made of woven and non-woven fabric and/or synthetic material,” in Class 20 (Serial No. 77531829). THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 2 Applicant also filed intent-to-use applications for the mark WHISPER DRIVE, in standard character form, for the following goods: Motors for automated window shades, window blinds, draperies, and window shutters; electronic motor control switches for use in operating motors controlling window shades, window blinds, draperies, and window shutters, in Class 9 (Serial No. 77531925); and Window blinds made of woven and non- woven fabric and/or synthetic material; window shades made of woven and non- woven fabric and/or synthetic material, in Class 20 (Serial No. 77531933). Applicant disclaimed the exclusive right to use the word “Drive.” The description of goods in application Serial No. 77531829 for the mark WHISPER and Serial No. 77531933 for the mark WHISPER DRIVE originally included “electronically- operated window blinds made of woven and non-woven fabric and/or synthetic material; electronically-operated window shades made of woven and non-woven fabric and/or synthetic material.” During the prosecution of the applications, applicant deleted electronically-operated window blinds and shades from the description of goods in an effort to avoid the likelihood of confusion rejection discussed below. Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 3 Finally, applicant claimed ownership of Registration No. 3544814 for the mark WHISPER AUTOMATION, in standard character form, for an “automated window treatment system comprising of [sic] an electronic motor control switch, a motor for controlling shades and blinds,” in Class 9.1 The examining attorney refused registration under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s marks, when used in connection with the products listed in applicant’s descriptions of goods, so resembles the registered marks listed below as to be likely to cause confusion. Both registrations are owned by the same entity. 1. WHISPERSHADE, in standard character form, for “window coverings, namely, motorized window shades,” in Class 20;2 and 2. WHISPERTRAC, in standard character form, for “motorized track components containing fabric window coverings, namely, curtains and draperies, all sold as a unit,” in Class 24.3 1 Issued December 9, 2008. See applicant’s May 5, 2009 response. Applicant disclaimed the exclusive right to use “Automation.” 2 Registration No. 3549430 issued December 23, 2008. 3 Registration No. 3621796 issued May 19, 2009. Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 4 Because these appeals involve common questions of fact and law, we have consolidated the proceedings. Citations to the file or a brief refer to application Serial No. 77531829 unles otherwise noted. Our determination of likelihood of confusion 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. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We turn first to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 5 these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, 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 overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than a specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this case, the average consumer of applicant’s window shades and blinds and registrant’s products are consumers of window blinds and shades and motorized blinds and window coverings. Although it would appear that companies that install window treatments would Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 6 be the average consumer for applicant’s motors for window shades and blinds, ultimate users of motorized window treatments would come in contact with electronic motor control switches for use in operating the motors that control these treatements. See the discussion below regarding the classes of consumers for applicant’s electronic motor switches. Applicant’s marks are WHISPER and WHISPER DRIVE and the registrant’s marks are WHISPERSHADE and WHISPERTRAC. They are similar to the extent that they share the word “Whisper.” Registrant’s marks are the combination of two recognizable words: “whisper,” and “shade” or “trac.” The word “Whisper” is the dominant part of registrant’s marks because it modifies the second word (“shade” or “trac”) which are generic terms when used in connection with window shades and with track components (i.e., a shade or a trac). Likewise, the word “Whisper” is the dominant portion of applicant’s mark WHISPER DRIVE because “drive” refers to the motor used for automated shades.4 In addition, applicant disclaimed the exclusive right to use the word 4 Even though applicant deleted electronically-controlled window shades and blinds from the description of goods, as discussed below, the identifications “window blinds” and “window shades” encompass both manual and motorized or electronic window blinds and shades. Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 7 “Drive” in response to the examining attorney’s requirement for the disclaimer on the ground that the word “Drive” is descriptive when used in connection with the goods listed in the applications. The significance of the word “Whisper” as the dominant element of registrant’s marks and applicant’s WHISPER DRIVE mark is reinforced by its location as the first part of the marks. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); see also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers must first notice the identical lead word). The word “Whisper” is defined as “to speak with soft, hushed sounds” and “a soft, rustling sound like a whisper: Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 8 the whisper of leaves in the wind.”5 When used in connection with applicant’s window blinds and shades, WHISPER engenders the commercial impression of something soft or silent. Thus, the commercial impression of this mark suggests the ease and character of silently raising and lowering the blinds or shades as opposed to blinds and shades that bang open and shut. When used in connection with applicant’s motors and electronic motor control switches and registrant’s motorized window shades, curtains and draperies, registrant’s marks WHISPERSHADE and WHISPERTRAC and applicant’s mark WHISPER DRIVE engender the commercial impression of a motor that silently raises or lowers the window treatment. Thus, registrant’s marks WHISPERTRAC and WHISPERSHADE and applicant’s marks WHISPER and WHISPER DRIVE engender similar commercial impressions. As discussed above, the process of comparing the marks does not rest on a side-by-side analysis or a point-by- point comparison of the marks that considers each similarity or difference. The focus is on the average 5 The Random House Dictionary of the English Language (Unabridged), p. 2167 (2nd ed. 1987). The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 9 purchasers who do not memorize marks; “there is a tendency for individuals to equate a new mark or experience with one that they have long experienced without making an effort to ascertain whether or not they are the same marks.” Cumberland Packing Corp. v. Estee Corp., 224 USPQ at 52. Therefore, consumers are not likely to differentiate applicant’s marks WHISPER and WHISPER DRIVE from the registered marks WHISPERSHADE and WHISPERTRAC. In view of the foregoing, we find that when the marks are compared in their entireties, they are similar in terms of appearance, sound, meaning and commercial impression. B. The similarity or dissimilarity and nature of the goods, channels of trade and classes of consumers. Applicant is seeking to register its marks for window blinds made of woven and non- woven and/or synthetic material; window shades made of woven and non-woven fabric and/or synthetic material; and motors for automated window shades, window blinds, draperies, and window shutters; electronic motor control switches for use in operating motors controlling window shades, window blinds, draperies, and window shutters, Registrant’s marks are registered for window coverings, namely, motorized window shades (WHISPERSHADE) and motorized track components containing fabric window coverings, namely, Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 10 curtains and draperies, all sold as a unit (WHISPERTRAC). 1. Applicant’s window blinds and shades vs. registrant’s motorized window shades and motorized track components containing fabric window coverings. It is well settled that the issue of likelihood of confusion between applied-for and registered marks must be determined on the basis of the goods as they are identified in the involved application and registration. Paula Payne Products Company v. Johnson Publishing Company, Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Thus, where the goods in the application are broadly described and there are no limitations in the identification of goods as to their nature, type, channels of trade or classes of purchasers, it is presumed that the scope of the registration encompasses all goods of the nature and type described, that the identified goods move in all channels of trade that would be normal for such goods, and that the goods would be purchased by all potential customers. Paula Payne Products Company v. Johnson Publishing Company, Inc., 177 USPQ at 77; In re Elbaum, 211 USPQ at 640. Applicant’s description of goods is for window shades and blinds of various materials. It is not restricted to Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 11 manual window shades and blinds and, therefore, we must presume that it includes both manual and motorized window shades and blinds. As a result, applicant’s window shades and must be considered legally identical to the motorized window shades identified in cited Registration No. 3549430. Further, applicant’s motors for automated window shades and electronic motor control switches for us in operating such motors are complementary products to the registrant’s motorized window shades, since such motors and motorized window shades can be used together. Moreover, in support of the relationship between the products, in his April 4, 2011 Office action, the examining attorney submitted excerpts from four (4) websites (YourBlinds.com, BlindsGalore.com, ShadesShuttersBlinds.com and Blinds.com) showing advertisements for the sale of motorized and manual brands of window shades and blinds, namely, BALI, LEVELOR, YOURBLINDS, and BLINDS.com. Because applicant’s description of goods is broad enough to encompass the registrant’s motorized window shades, we must presume that applicant’s goods move in the same channels of trade and are sold to the same classes of consumers as the registrant’s goods. This presumption is supported by the excerpts from the four (4) websites noted Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 12 above where those four companies advertised the sale of motorized and manual window shades and blinds. 2. Applicant’s motors and electronic motor control switches for automated window shades, window blinds, draperies, and window shutters vs. registrant’s motorized window shades and motorized track components containing fabric window coverings. Applicant’s motors and electronic motor control switches for automated window shades, window blinds, draperies, and window shutters are inherently related to registrant’s motorized window shades and motorized track components containing fabric window coverings because, by the very nature of the identifications of goods, registrant’s products include motors and/or electronic motor control switches. A consumer who owns and/or uses a motorized window shade and/or blind may also use an electronic motor control switch to operate the window shade or blind. Thus, the same consumer may encounter the marks used in connection with window shades and blinds and electronic motor control switches. For example, the excerpt from the BlindsGalore.com website states that “Remote Control window treatments offer the simplicity of push-button operation for your window treatments”; the ShadeShutterBlinds.com website touts that you can “operate multiple shades with a Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 13 flick of a switch”; and the Blinds.com website provides that “Motorized blinds can tilt open or closed at the touch of a button.” C. Applicant’s ownership of Registration No. 3544814 for the mark WHISPER AUTOMATION. As indicated above, applicant claims ownership of a registration of the mark WHISPER AUTOMATION for an “automated window treatment system comprising of [sic] an electronic motor control switch, a motor for controlling shades and blinds.” Applicant asserts that the registration is probative that applicant and registrant have coexisted in the marketplace for over six years and on the register for three years. According to applicant, this coexistence amounts to registrant’s implied consent to applicant’s registration as evidenced by the lack of any opposition or cancellation proceeding by registrant against applicant’s WHISPER AUTOMATION registration.6 Whatever conclusions applicant would like us to draw from the coexistence of its prior registration with those of the cited registrant’s, the difficulty with applicant’s argument is that the marks and goods for which applicant now seeks registration (WHISPER and WHISPER DRIVE) are 6 Applicant’s Brief, p. 5. Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 14 different from its prior registration (WHISPER AUTOMATION). In this regard, it does not escape us that applicant is arguing, on the one hand, that WHISPER and WHISPER DRIVE are similar to WHISPER AUTOMATION but, on the other hand, that WHISPER and WHISPER DRIVE are not similar to WHISPERSHADE and WHISPERTRAC. Because the goods in applicant’s applications for the marks WHISPER and WHISPER DRIVE are not the same as the goods in the WHISPER AUTOMATION registration, “[t]he Office should not be barred from examining the registrability of a mark when applicant seeks to register it for additional goods as it does here, even when the additional goods are closely related to those listed in the prior registration.” In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994). As the Board stated in In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986): The cases are legion holding that each application for registration of a mark for particular goods or services must be separately evaluated. See for example, In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed.Cir. 1985) [other citations omitted]. Section 20 of the Trademark Act, 15 USC § 1070, gives the Board the authority and duty to decide an appeal from an adverse final decision of the Examining Attorney. This duty may not be delegated by adoption of conclusions reached by Examining Attorneys on different records. Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 15 Suffice it to say that each case must be decided on its own merits based on the evidence of record. We are not privy to the record in the files of the registered marks and, in any event, the issuance of a registration(s) by an examining attorney cannot control the results of another case. D. Registrant’s implied consent to the registration of applicant’s marks. With respect to applicant’s argument that the registrant has impliedly consented to the registration of its current applications, applicant explains that it filed a petition to cancel registrant’s cited registrations. That petition was subsequently withdrawn and the cancellation was dismissed without prejudice with registrant’s consent. See Trademark Rule 2.114(c), 37 CFR § 2.114(c) (“After the answer is filed, the petition may not be withdrawn without prejudice except with the written consent of the registrant or the registrant’s attorney”). According to applicant, because registrant could have withheld its consent and forced the petition to be dismissed with prejudice, registrant’s consent to the withdrawal of the petition to cancel is evidence of Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 16 registrant’s implied consent to the registration of applicant’s mark at issue in this appeal.7 We reject applicant’s argument that registrant has implicitly consented to the registration of applicant’s marks WHISPER and WHISPER DRIVE. Action in the applications at issue was suspended pending applicant’s petition to cancel the cited registrations. Applicant withdrew the petition for cancellation with registrant’s consent but without obtaining registrant’s consent to register applicant’s applications. We will not infer from registrant’s consent to applicant’s withdrawal of a proceeding against registrant that registrant has no objection to applicant’s registration of the marks WHISPER and WHISPER DRIVE. If registrant had no objection to the registration of applicant’s marks, applicant should have obtained registrant’s consent to use and register. The circumstances upon which applicant relies in these appeals does not suffice as a substitute for such an agreement. Simply put, a consent for another party to withdraw a proceeding is very different from a consent to that party’s registering its own marks. See Duramax Marine LLC v. R.W. Fernstrum & Co., 80 USPQ2d 1780, 1790-1791 (TTAB 2006) 7 Applicant’s Brief, pp. 5-6. Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 17 (“the absence of any provision in the settlement agreement specifically barring opposer from opposing the already- filed application is telling”). While registrant consented to the withdrawal of applicant’s petition for cancellation, we are not privy to the reasons why registrant consented, nor are we privy to the reasons why registrant did not consent to applicant’s registration of the marks in its pending applications. E. The lack of any reported instances of confusion. Finally, applicant argued that it is unaware of any reported instances of confusion. In making this claim, applicant has given us its version of the marketplace by merely pointing out that no instances of actual confusion have been reported to it. The fact that an applicant in an ex parte appeal is unaware of any instances of actual confusion is generally entitled to little probative value in the likelihood of confusion analysis because the Board has no way of knowing whether registrant is unaware of any instances of actual confusion, nor is it usually possible to determine that there has been any significant opportunity for actual confusion to have occurred. In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001). F. Balancing the factors. Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 18 The du Pont factors require to us to consider the factors for which evidence has been made of record in likelihood of confusion cases. 1. WHISPER for window blinds and shades (Serial No. 77531829. Because the marks are similar, the goods are similar and they move in the same channels of trade and are sold to the same classes of consumers, we find that applicant’s mark WHISPER for window blinds and shades so resembles registrant’s marks WHISPERSHADE for “window coverings, namely, motorized window shades” and WHISPERTRAC for “motorized track components containing fabric window coverings, namely, curtains and draperies, all sold as a unit” as to be likely to cause confusion. 2. WHISPER DRIVE for window blinds and shades (Serial No. 77531933). Because the marks are similar, the goods are similar and they move in the same channels of trade and are sold to the same classes of consumers, we find that applicant’s mark WHISPER DRIVE for window blinds and shades so resembles registrant’s marks WHISPERSHADE for “window coverings, namely, motorized window shades” and WHISPERTRAC for “motorized track components containing fabric window Serial No. 77531829 Serial No. 77531925 Serial No. 77531933 19 coverings, namely, curtains and draperies, all sold as a unit” as to be likely to cause confusion. 3. WHISPER DRIVE for motors and electronic motor control switches for automated window shades, window blinds, draperies, and window shutters (Serial No. 77531925). Because the marks are similar, the goods are related and the goods will be encountered by the same consumers, we find that applicant’s mark WHISPER DRIVE for motors and electronic motor control switches for automated window shades, window blinds, draperies, and shutters is likely to cause confusion with registrant’s marks WHISPERSHADE for “window coverings, namely, motorized window shades” and WHISPERTRAC for “motorized track components containing fabric window coverings, namely, curtains and draperies, all sold as a unit.” Decision: The refusal to register application Serial Nos. 77531829, 77531925 and 77531933 are affirmed.