Innovative Marble & Tile, Inc.

Trademark Trial and Appeal Board

Dec 30, 2002

No. 75119724 (T.T.A.B. Dec. 30, 2002)

Paper No. 13
EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re INNOVATIVE MARBLE & TILE, INC.
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Serial No. 75/119,724
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Myron Amer for INNOVATIVE MARBLE & TILE, INC.
Won T. Oh, Trademark Examining Attorney, Law Office 104.
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Before Cissel, Hanak and Chapman, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
INNOVATIVE MARBLE & TILE, INC. (applicant) seeks to
register in typed drawing form SIGNATURE STONE for “flat
pieces of marble and granite to cover floors.” The intent-
to-use application was filed on June 12, 1996. In the
first Office Action, the Examining Attorney explained that
the word STONE in applicant’s mark was descriptive of
applicant’s goods, and hence must be disclaimed. In
response, applicant disclaimed exclusive rights to the use
of the word STONE.
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Citing Section 2(d) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark SIGNATURE STONE, as applied to
applicant’s goods, is likely to cause confusion with the
mark SIGNATURE TILE, previously registered in typed drawing
form for “ceramic tile.” Registration No. 757,145.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed opening briefs. Applicant also filed a
reply brief, which this Board has considered. Applicant
did not request a hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the marks, they both begin with the
arbitrary word SIGNATURE. Indeed, the word SIGNATURE is
the only arbitrary portion of applicant’s mark and
registrant’s mark. We have already explained that
applicant has disclaimed exclusive rights to the
Ser. No. 75/119,724
3
descriptive word STONE. In similar fashion, registrant
disclaimed the exclusive rights to the descriptive word
TILE.
We are fully aware that “the basic principle in
determining confusion between marks is that marks must be
compared in their entireties and must be considered in
connection with a particular goods or services for which
they are used.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 750 (Fed. Cir. 1985). However, the foregoing
principle is set forth with the caveat that “in
articulating reasons for reaching a conclusion on the issue
of confusion, there is nothing improper in stating that,
for rational reasons, more or less weight has been given to
a particular feature of a mark.” National Data, 224 USPQ
at 751. It is well known that “one commonly accepted
rationale for giving less weight to a portion of a mark” is
if that portion “is descriptive or generic with respect to
the involved goods.” National Data, 224 USPQ at 751.
In view of the foregoing, it is our determination that
the word SIGNATURE is the dominant portion of both marks.
Not only is it the only arbitrary portion of both marks,
but in addition, it is the first word of both marks and the
longest word of both marks. Moreover, both the application
and the cited registration depict the marks in typed
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drawing form. Because both marks are depicted in typed
drawing form, “this means that [the] application [and
registration are] not limited to the mark[s] depicted in
any special form[s].” Phillips Petroleum Co. v. C.J. Webb,
Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971).
Accordingly, in deciding the issue of likelihood of
confusion, we are obligated “to visualize what other forms
the mark[s] might appear in.” Phillips Petroleum, 170 USPQ
at 36.
One reasonable manner of presenting applicant’s mark
would be to have the arbitrary word SIGNATURE appear on one
line in larger lettering, and the descriptive word STONE
appear on a second line in smaller lettering. Likewise,
one reasonable manner of presenting the registered mark
would be to depict the arbitrary word SIGNATURE on one line
in larger lettering, and the descriptive word TILE in
smaller lettering on a second line. When so depicted, the
marks would be extremely similar.
Considering next the goods, applicant’s goods are flat
pieces of marble and granite to cover floors. Obviously,
registrant’s goods (ceramic tile) could likewise cover
floors. In other words, both applicant’s product and
registrant’s product serve the same purpose. An ordinary
homeowner, in need of covering his bathroom or kitchen
Ser. No. 75/119,724
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floor, could easily go to a building supply house and be
confronted with various floor covering options including
marble, granite and ceramic tile. If said ordinary
homeowner were to see the mark SIGNATURE STONE on marble
and granite and see the mark SIGNATURE TILE on ceramic
tile, we are of the very firm belief that said ordinary
homeowner would believe that all three products emanated
from a common source. This ordinary homeowner would, in
our judgment, view the descriptive words STONE and TILE not
as source indicators, but rather as words which simply
named the different type of floor coverings. Indeed, we
believe that the marks are so similar that even a
professional builder would assume that both marks indicated
that the products emanated from a common source, and that
the words STONE and TILE merely indicated the particular
type of product.
Finally, we take note of the fact that the Examining
Attorney has properly made of record five third-party
registrations which cover ceramic tile, on the one hand,
and marble and/or granite on the other hand. While it is
true that such third-party registrations do not prove that
the marks registered are in actual use, they nevertheless
“have some probative value to the extent that they may
serve to suggest that such goods or services are of the
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type which may emanate from a single source.” In re Mucky
Duck Restaurant Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988),
aff’d as not citable precedent 88-1444 (Fed. Cir. November
14, 1988). In any event, we would have reached the same
result that there exists a likelihood of confusion
regardless of the presence or absence of these third-party
registrations in the record.
Decision: The refusal to register is affirmed.