Jordan Drew Corporation

Trademark Trial and Appeal Board

Oct 29, 2012

No. 85194329 (T.T.A.B. Oct. 29, 2012)

Mailed: October 9, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
_____

In re Jordan Drew Corporation
_____

Serial No. 85194329
Filed December 9, 2010
_____

Kevin J. Harrington and John T.A. Rosenthal, for applicant.

David H. Stine, Trademark Examining Attorney, Law Office 114, K. Margaret Le,
Managing Attorney.
_____

Before Kuhlke, Mermelstein, and Ritchie, Administrative Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Opposer seeks registration on the Principal Register of HOME SMART HANG
RITE (in standard characters) for goods currently identified as
a manually operated, t-shaped device, namely, made of plastic, with a
movable, positioning slide on the vertical portion of the device,
designed and used to enable framed items to be placed or hung on a
wall at a specific level or height.
Currently classified in International Class 20.1
Registration has been finally refused in view of the prior registration of HANG
RIGHT STUD FINDER PLUS for a “non-electric wall stud finder and bubble level,”
in Class 9.2 Trademark Act § 2(d), 15 U.S.C. § 1052(d). The examining attorney has

1 Based upon the allegation of a bona fide intent to use the mark in commerce.
2 Registration No. 3587062, registered March 10, 2009, based on use in commerce. STUD
FINDER disclaimed.
This Opinion is not a
Precedent of the TTAB
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also issued a final requirement for an acceptably definite and correctly-classified
identification of goods. Trademark Act § 1(b)(2), 15 U.S.C. § 1051(b)(2); Trademark
Rules 2.32(a)(6), 2.85(a). Applicant appeals from the examining attorney’s final
refusal and requirement.
We affirm on both grounds.
I. Identification and Classification of Goods
The examining attorney maintains that applicant’s identification of goods is
indefinite and that applicant has incorrectly classified the goods. Registration was
withheld pending satisfaction of a final requirement to supply an acceptable
identification and classification of goods addressing these issues. The examining
attorney clearly explained the refusal in both Office actions and provided
suggestions for an acceptable identification, should applicant find them acceptable.
Final Ofc. Action (Aug. 24, 2011). Applicant did not adopt one of the examining
attorney’s suggestions, but proposed the following language instead:
A manually operated, t-shaped device, namely, made of plastic, with a
movable, positioning slide on the vertical portion of the device,
designed and used to enable framed items to be placed or hung on a
wall at a specific level or height.

The examining attorney rejected applicant’s proffered identification for the
same reasons and maintained and made final the requirement for a definite and
properly-classified identification of goods.
In its opening brief, applicant acknowledged the final requirement, App. Br. at
2, but presented no argument on the topic. Applicant’s complete failure to argue this
issue in its opening brief cannot be construed as anything but a waiver of the issue.
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While applicant does argue the point in its reply brief, Reply Br. at 7-9, that is too
late. While the Board is not overly strict on such rules, the complete failure to
discuss a ground for refusal until a reply brief is filed is unacceptable. It not only
deprives the Office of the right to respond to applicant’s arguments on appeal, but it
also deprives the Board the benefit of hearing the Office’s response to applicant’s
arguments. Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1036
(TTAB 2010). For this reason alone, we would affirm the refusal to register. But
because applicant may file a new application, we note our general agreement with
the examining attorney on this issue.
As currently drafted, applicant’s identification of goods is indefinite and
misclassified. As explained by the examining attorney, applicant’s goods appear to
be properly classified in International Class 8 or Class 9 although it is not clear
from the language currently employed which class is proper. As the examining
attorney notes, Ex. Att. Br. at 8, the predominant feature of the goods should be
placed first and the item should be classified accordingly. See TMEP § 1401.05(a).
Thus, the examining attorney suggested that applicant’s goods be classified in
International Class 8 if the item is predominantly a hand tool, or International
Class 9 if it is described primarily as a measuring device, but that in either event,
the identification should be amended to clarify both the nature of the goods and
their proper class. Class 8 (“Hand tools”) generally covers a variety of hand-
operated tools and Class 9 (“Electrical and scientific apparatus”) includes
measuring devices. What is clear, however, is that — at least as currently described
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— applicant’s goods do not belong in International Class 20. That class covers
“Furniture and articles not otherwise classified,” including most furniture, mirrors,
mattresses, and the like, as well as picture frames. TMEP § 1401.02(a).
Applicant’s only argument on classification is that its goods belong in
International Class 20 because they are “made of plastic [and] relate[] to picture
frames,” and that they “are not side arms, razors or cutlery, [all in Class 8] and are
not scientific, nautical, electric, or data processing [all in class 9] in nature.” Reply
Br. at 8-9. Applicant’s “straw man” argument is disposed of easily, as the examining
attorney never suggested applicant’s goods were “side arms, razors,” or any of the
other items listed, and International Classes 8 and 9 are certainly not limited to
such items. The examining attorney merely suggested that the goods appeared to be
either hand tools or measuring tools, and that they should be described and
classified as such.
Applicant’s arguments for inclusion of its goods in International Class 20 are
unavailing. The mere fact that the goods are made of plastic does not require
classification in International Class 20 when there are other, more appropriate
classes, and items made of plastic are in fact classified in a number of classes,
depending on their use. And the fact that applicant’s goods may be “relate[d] to
picture frames” — apparently in that they are used to hang them — is of very little
relevance. Hammers are also used to hang picture frames (and are thus related in
the same way as applicant’s goods), but they are properly in International Class 8.
If one needs a tape measure or a level to hang those pictures, they will be found in
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Class 9 (hence the examining attorney’s suggestion of that class). Nails and metal
picture hangers are also used for the same purpose, but they are in International
Class 6. (Non-metal picture hangers are in International Class 20, but that is only
because there is no other appropriate class; recall that the class heading for
International Class 20 is “furniture and articles not otherwise classified.”) In the
case at bar, it appears that applicant’s goods are more appropriately classified in
either International Class 8 or 9, which removes them from Class 20, because if
they are in 8 or 9, they would be “otherwise classified.”
Applicant is correct that the USPTO will give some deference to an applicant’s
identification of its goods. Reply Br. at 7. But that deference is not a license to
identify goods in such a way as to be in the wrong class or to span more than one
class. When language in an identification of goods “makes classification difficult or
ambiguous,” TMEP § 1402.01(a), it is indefinite, and the examining attorney must
require amendment. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed.
Cir. 2007) (“It is within the discretion of the PTO to require that one’s goods be
identified with particularity.” (quoting In re Water Gremlin Co., 635 F.2d 841, 208
USPQ 89, 91 (CCPA 1980))); see also TMEP §§ 1402.01(a), 1402.01(e). We conclude
that applicant’s original identification and its proposed amendment are both
indefinite because they cannot be properly classified, and in any event, they appear
to be mis-classified in International Class 20.3

3 We note that a requirement for an amended identification of goods or services may be
reviewed either upon petition to the Director or upon appeal to the TTAB. By contrast,
classification itself is a procedural matter that is reviewable only by way of a petition.
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II. Likelihood of Confusion
Although we would affirm based solely on the examining attorney’s requirement
for an amended identification of goods, we will consider the substantive refusal for
the sake of completeness.
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering
the evidence of record on these factors, we keep in mind that “[t]he 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.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); see In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. The Similarity or Dissimilarity of the Marks in their Entireties
In a likelihood of confusion analysis, we compare the marks for similarities and
dissimilarities in appearance, sound, connotation and commercial impression. Palm
Bay, 73 USPQ2d at 1692. “[T]he test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather whether the marks are

TMEP § 1704 (citing In re Tee-Pak, Inc., 164 USPQ 88 (TTAB 1969).
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sufficiently similar in terms of their overall commercial impression so that
confusion as to the source of the goods offered under the respective marks is likely
to result.” H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008).
Applicant’s mark is HOME SMART HANG RITE, in standard characters. The
mark in the cited registration is HANG RIGHT STUD FINDER PLUS, also in
standard characters. We note that the registrant has disclaimed the exclusive right
to use the term “STUD FINDER,” which is at least descriptive (and likely generic)
for the registrant’s goods. While descriptive, generic, or otherwise disclaimed matter
is not removed from the mark, and we must consider the marks in their entireties,
the “descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.” Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)). See also In re N.A.D. Inc., 57
USPQ2d 1872, 1873-74 (TTAB 2000) (“[t]hese descriptive, if not generic, words have
little or no source-indicating significance”). By the same token, the term PLUS has
a connotation which is strongly suggestive of an item with features or capabilities
additional to those one might otherwise expect (or beyond those of a previous
model), in this case that of a stud finder which includes a level. We conclude that
the dominant part of the registrant’s mark is “HANG RIGHT.” While the mark
clearly includes the additional wording “STUD FINDER PLUS,” that wording is of
little distinctiveness, consisting of (at least) merely descriptive and highly
suggestive terms.
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The words HANG RITE in applicant’s mark are highly similar in appearance
and identical in sound and connotation to the dominant part of the cited registrant’s
mark. The words “RIGHT” in the prior registration and “RITE” in applicant’s mark
would surely be pronounced identically, and it is highly likely that the relevant
consumers would view these phonetic equivalents as being identical in meaning in
this context,4 connoting something which will help the user to hang a picture (or
similar item) correctly. Likewise, since both marks are registered in standard
character form, they could be displayed in the identical typeface, case, size, or color.
Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1258-59 (Fed. Cir. 2011).
In arguing that its mark is not similar to that of the cited registrant, applicant
raises several arguments, none of which is availing.
First, applicant argues that its house mark, HOME SMART, is famous.5 On this
record, applicant has not proven that HOME SMART is famous, Packard Press Inc.
v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1356 (Fed. Cir. 2000)
(considerations in determining fame), but more importantly, the fame of applicant’s

4 We recognize, of course, that the word “rite” has its own meaning. See, e.g., MERRIAM-
WEBSTER DICTIONARY (http://www.merriam-webster.com/dictionary/rite (Oct. 15, 2012))
(defining “rite” as “a prescribed form or manner governing the words or actions for a
ceremony”). Nonetheless, we must consider the meaning of the mark in the context of the
identified goods, and applicant’s goods have nothing to do with religious or other cere-
monies. As used in applicant’s mark — and applied to applicant’s goods — the term RITE
would very likely be seen as a variant spelling of the term “right,” meaning correct or
proper.
5 In this regard, applicant claims that the examining attorney is “violating TTAB
precedent.” Reply Br. at 3. However, applicant has identified no contrary precedent, and we
are not aware of any.
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mark is not an appropriate consideration. When fame is an issue, it is considered
pursuant to the fifth factor set out by the court in du Pont. See du Pont, 177 USPQ
at 567. Under that factor, we consider “[t]he fame of the prior mark.” Id. (emphasis
added). The fame of the junior user’s mark is not a factor, and for good reason — if
an applicant’s fame were to be considered, a newcomer could wrest ownership of a
prior user’s mark merely by spending more on advertising. To the contrary, the
fame of the junior user’s mark is not a factor in its favor. (If anything, the renown of
the applicant’s mark may make confusion more likely by exposing more potential
consumers to a mark similar to that of the registrant. Those consumers, upon
encountering the registrant’s prior mark, might then assume (incorrectly) that
applicant is the source of the registrant’s goods.)
Second, applicant maintains that the examining attorney incorrectly “failed to
account for the fact that [a]pplicant’s famous ‘HOME SMART’ house mark is the
first part of the applied-for mark.” Reply Br. at 4. We see no error in the examining
attorney’s reasoning. “HANG RIGHT” is clearly the dominant element in the cited
registration, and is identical, or nearly so, to “HANG RITE” as used in applicant’s
mark. “[T]here is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their entireties. Indeed, this type
of analysis appears to be unavoidable.” In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). Likewise, while we certainly consider “HOME
SMART” to be part of applicant’s mark, a junior user will not necessarily avoid a
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likelihood of confusion merely by using its house mark. General Mills Inc. v. Fage
Dairy Processing Indus. SA, 100 USPQ2d 1584, 1602 (TTAB 2011). Indeed, in some
instances, such use may even enhance the likelihood for confusion by making it
appear as if the prior registrant’s goods originate with applicant. E.g., Key West
Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168, 170 (TTAB
1982). See also In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010) (“[T]he presence of an additional term in the mark does not necessarily
eliminate the likelihood of confusion if some terms are identical.” (citations
omitted)). But see Knight Textile Corp. v. Jones Inv. Co., 75 USPQ2d 1313, 1315
(TTAB 2005) (“there is no arbitrary rule of law that if two product marks are
confusingly similar, likelihood of confusion is not removed by use of a company or
housemark in association with the product mark.” (quoting New England Fish Co.
v. Hervin Co., 511 F.2d 562, 184 USPQ 817, 819 (CCPA 1975) (internal citation
omitted)).
Third, applicant faults the examining attorney for “focus[ing] attention on the
descriptive/suggestive portion of Registrant’s mark,” arguing that “‘Hang Right’ is
nothing more than a descriptive or suggestive phrase....” Reply Br. at 4-5. While we
agree that “HANG RIGHT” in registrant’s mark — as well as the nearly identical
“HANG RITE” in applicant’s — is suggestive of a purpose for the respective goods,
those words are not disclaimed in either applicant’s or the registrant’s mark, and
applicant has not demonstrated that they are entitled to only “very[] limited,
narrow protection, if any at all.” Id. To the contrary, even suggestive marks are
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entitled to protection from confusion. King Candy Co. v. Eunice King's Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (“Confusion is confusion. The
likelihood thereof is to be avoided, as much between ‘weak’ marks as between
‘strong’ marks, or as between a ‘weak’ and a ‘strong’ mark.”). Here, applicant has
incorporated the dominant portion of the prior registrant’s mark into its own nearly
verbatim, resulting in marks with significant similarities.
Fourth, applicant urges that the examining attorney “improperly compared the
second portion of Applicant's mark ... with the first ... portion of Registrant's
mark.... Such comparison by the Examining Attorney of these two different parts of
the respective marks runs contrary to the framework set forth by the Federal
Circuit and the TTAB.”6 Applicant contends that the mark in the prior registration
“focuses the attention of the consumer on the fact that the implement for which the
mark is used is a stud finder.” Reply Br. at 5-6. Applicant’s argument misses the
point; it is precisely because the registrant’s goods are stud finders that the term
“STUD FINDER” in the registrant’s mark is (at least) highly descriptive and
entitled to little — if any — weight in distinguishing the marks, while “PLUS” lends
very little distinctiveness to the registrant’s mark. Thus, while applicant is correct
to the extent that the registrant’s mark informs consumers that the registrant’s
goods are stud finders, neither STUD FINDER nor PLUS have any significant
source-identifying capacity, and the dominant part of the registrant’s mark is
clearly “HANG RIGHT,” which applicant has incorporated nearly verbatim into its

6 Applicant again refers to Board and Federal Circuit precedent which is not cited, quoted,
or discussed.
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mark.
To the extent applicant contends that it is incorrect to compare the first part of
one mark with the second part of another, it is mistaken. While we sometimes say
that the first part of a mark is more likely to be dominant, e.g., Presto Prods., Inc. v.
Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988), that is certainly not a
hard and fast rule, and it is not particularly unusual for the dominant part of a
word mark to appear second, last, or in any other position. The relevant question is
whether the marks — considered in their entireties — are similar, not the order in
which words appear. While word order can sometimes help explain why two marks
are similar, it is not itself determinative of either similarity or the lack of it.
Fifth, and finally, applicant argues that “the examining attorney effectively
reduced Registrant’s entire mark to a mere two words ‘Hang Right,’ rather than
compare the two marks in their entireties. Reply Br. at 5-6. Again we see no error in
the examining attorney’s analysis. We agree that our ultimate conclusion must be
based on a comparison of the two marks as a whole. But as we have already
explained, “HANG RIGHT” is clearly the dominant part of the cited mark, and
when comparing two non-identical marks, it is not inappropriate to consider the
weight to be given to the elements of the respective marks. “Indeed, this type of
analysis appears to be unavoidable.” In re Nat’l Data Corp., 224 USPQ at 751.
Notwithstanding applicant’s arguments, we find that applicant’s HOME
SMART HANG RITE mark is substantially similar to the cited HANG RIGHT
STUD FINDER PLUS mark in that applicant has incorporated the dominant
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portion of the prior mark with only a slight alteration in spelling, to which applicant
has added its house mark “HOME SMART.” We may not ignore the addition of
applicant’s house mark to HANG RITE, and we agree that to some extent, it results
in a mark which is, as a whole, somewhat different than the cited registration. In
Knight Textile, which applicant cites, we noted that the addition of a house mark
can sometimes result in a registrably distinct mark, although that is not always the
case. Id. 75 USPQ2d at 1315-16. In Knight Textile, the applicant submitted “twenty-
three third-party registrations (owned by twenty-one different owners) of marks
which include the word ESSENTIALS for clothing items,” which was common to
both marks, and to which applicant had added its house mark “NORTON
McNAUGHTON.” Id. at 1314. Finding that the rather substantial number of third-
party registrations corroborated a dictionary definition of “ESSENTIALS,” the
Board found that term to be highly suggestive of the relevant goods, and that the
parties’ customers would likely look to other elements of the marks — namely,
applicant’s distinctive house mark “NORTON McNAUGHTON” — to distinguish
them. Id. at 1315-16.
In this case we consider HANG RITE in the cited registration and the nearly
identical HANG RIGHT in applicant’s mark to be somewhat suggestive of the goods
at issue. But unlike the situation in Knight Textile, where the applicant had
submitted evidence of extensive third-party registration, there is no evidence in this
record establishing how suggestive HANG RITE is, or that many others have
registered — let alone used — the same term for the same goods. Moreover, in
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Knight Textile, there was nothing to indicate that the house mark which applicant
had appended to ESSENTIALS was itself in any way suggestive or otherwise weak.
By contrast, in the case at bar, applicant’s house mark “HOME SMART” is at least
somewhat suggestive of a line of intelligent products for the home. Thus, applicant’s
house mark is itself weaker than was the applicant’s house mark in Knight Textile,
and thus less likely to distinguish the marks at issue.
Unlike the case in Knight Textile, we conclude that the marks in this case are
virtually identical in part, and substantially similar when considered in their
entireties. We conclude that the similarity of the marks favors a finding that
confusion is likely.
B. The Similarity or Dissimilarity and Nature of the Goods
Applicant’s goods are identified as
a manually operated, t-shaped device, namely, made of plastic, with a
movable, positioning slide on the vertical portion of the device,
designed and used to enable framed items to be placed or hung on a
wall at a specific level or height.
The goods in the cited registration are identified as a “non-electric wall stud finder
and bubble level.” While applicant’s identification of goods remains somewhat
vague, we understand applicant’s goods to be a device used as an aid in hanging
pictures at a specific level or height,7 while the cited registrant’s goods consist of a

7 Applicant chastises the examining attorney for his failure to direct his arguments to
applicant’s actual product “even though the product was on the market during this period.”
App. Br. at 4. The criticism is unwarranted; this application was filed on an intent-to-use
basis, so even if the examining attorney had searched for and found information about
applicant’s current product, he would not have known with any certainty whether the
result of his search was the product on which applicant intends to use its mark. Applicant
did submit an advertisement for its goods, Exh. A, Resp. to Ofc. Action (July 19, 2011),
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stud finder with an incorporated level.
Applicant contends that “[t]he fact that Registrant’s [identification of goods]
does not include Applicant’s goods precludes a finding of likelihood of confusion,”
App. Br. at 12, but that is not the standard.8 Applicant’s goods and those of the
registrant need not be identical, or even competitive to support a finding that
confusion is likely.
Rather, it is enough that [the goods] are related in some manner or
that some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under circum-
stances which could give rise, because of the marks used or intended to
be used therewith, to a mistaken belief that they originate from or are
in some way associated with the same producer or that there is an
association between the producers of each parties’ goods or services.
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
As noted, applicant’s goods are for use in hanging framed items on a wall at a
particular height or level. The examining attorney submitted several articles from
the internet discussing the use of a stud finder in hanging pictures. According to the
authors, it is important to anchor hung items securely to the wall, and heavier

which we have considered, but if applicant believed that additional information about its
product was useful or necessary to proper examination of its application, applicant should
have submitted that information itself. In any event, while more information about
applicant’s actual goods might have been helpful, “the authority is legion” that we must
base our decision on the goods as described in the application — “regardless of what the
record may reveal as to the particular nature of ... applicant's goods....” Octocom Sys. Inc. v.
Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)
(emphasis added).
8 Applicant cites In re Benefit Int’l Prods., Ltd., No. 77666733 (TTAB March 14, 2011) (not
precedential) in support of its proposed rule. Aside from the fact that it is not precedential,
the cited decision simply does not say that a finding of likelihood of confusion is precluded
unless the registrant’s goods encompass those of the applicant (or vice versa). Id. slip op. at
4-8.
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framed items may require a more secure anchor. In such cases, a picture hook may
be anchored on a stud behind the wall. The evidence further demonstrates that use
of a stud finder is a common and convenient way to locate a stud for this purpose.
Instructions, How to Hang a Picture Using a Stud Finder, http://www .ehow .com
/how _ 2148225_hang-picture-using-stud-finder.html (Jan. 14, 2011); Home Depot,
Picture & Mirror Hangers, http://www.homedepot.com/Buying-Guide-Picture-
Mirror- Hangers/h_d1/NCC-1701/h_ d2/ContentView?pn= Picture_Mirror_ Hanging
&storeld =10051&langld=-1&catalogld=10053 (Jan. 14, 2011); cf. Gardenguides.com,
How to Install a Plant Hanger, http://www.gardenguides.com/93697-install-plant-
hanger.html (Jan. 14, 2011). Moreover, a level — which is incorporated into the
stud finder identified by the registrant — is obviously useful in hanging items at a
particular level or height.
Applicant’s device is functionally the same as registrant’s device in that they
both assist in the hanging of items at a given height or level. Although applicant’s
device is different from registrant’s goods in that it does not include a stud finder, or
include a level, they are complementary products, in that they can be used together
for a common purpose: the registrant’s stud finder can locate studs to securely
anchor framed items, while applicant’s device can be used to hang those items at a
uniform height or level. See, e.g., Top Tobacco LP v. N. Atl. Operating Co., 101
USPQ2d 1163, 1170 (TTAB 2011) (tobacco complementary and thus closely related
to cigarettes, pocket machines for rolling cigarettes, cigarette tubes, and filter tips
for cigarettes); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1713
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(TTAB 2010) (flashlights and flashlight bulbs complementary); Edwards
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 416-17 (TTAB 2010) (system
that “anticipates and detects adverse drug events” complementary to “heart
monitors”). The issue, of course, is not whether purchasers would confuse the
applicant’s goods with the registrant’s, but whether they are related in such a way
that there would be a likelihood of confusion as to their source. In re Rexel Inc., 223
USPQ 830, 831 (TTAB 1984). We conclude under the facts of this case that the
goods are significantly related. This factor therefore supports a finding of likelihood
of confusion.
C. Channels of Trade/Likely Consumers
Applicant briefly argues that its goods are not sold in the same channels of
trade as those of the registrant because “the web-page examples contained in the
Examining Attorney's Office Action did not include references to Applicant's
product....” App. Br. at 5. We are not persuaded that the examining attorney’s
evidence has anything to do with applicant’s channels of trade or those of the cited
registrant. The evidence to which applicant refers appears to have been selected
and submitted to show the relationship of the identified goods — in particular that
stud finders, like applicant’s goods, are used to hang pictures. The point of the
evidence was not to illustrate the respective channels of trade for the goods, and it
is not appropriate to draw from it any conclusions as to those channels of trade.
In fact, applicant submitted no evidence as to the normal channels of trade for
its device or for the registrant’s stud finder. While applicant states that its products
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are sold “in Walgreens, on TV and on the internet,” App. Br. at 4, applicant’s
channels of trade are not limited by its current practice. Rather, the relevant
channels of trade are those channels which are normal for goods of the type
identified. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (“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”). The normal channels of trade for goods such as applicant’s picture
hanging device would include hardware stores and other similar retail outlets
where stud finders (as well as levels, picture hooks, nails, hammers and other items
useful for hanging pictures) may be found. Thus this factor also supports affirmance
of the examining attorney’s refusal.
Moreover, it appears likely that the potential customers for applicant’s goods
and those for registrant’s overlap, at least in part. Because applicant’s device and
that of the registrant are used to hang pictures, consumers may use applicant’s
device to hang their framed items at a particular level, and at the same time use the
registrant’s stud finder to locate a stud when hanging heavy items. This factor
weighs in favor of affirmance.
D. Balancing the Factors
We have found that applicant’s mark is similar to that of the registrant, that
the identified goods are related, and that applicant’s channels of trade and
customers appear to overlap in part with those of the registrant. We conclude that
applicant’s mark, HOME SMART HANG RITE for the identified picture hanging
Serial No. 85194329

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device is likely to cause confusion with the cited prior registration for HANG
RIGHT STUD FINDER PLUS for a “non-electric wall stud finder and bubble level.”
To the extent we have any doubt in our conclusion, we have resolved it, as we must,
in favor of the prior registrant. See Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56
USPQ2d 1504, 1514 (TTAB 2000); W.R. Grace & Co. v. Herbert J. Meyer Indus.,
Inc., 190 USPQ 308, 311 (TTAB 1976).
III. Conclusion
We have carefully considered all of the evidence and argument submitted by
applicant and the examining attorney, including any matters which we have not
specifically discussed. For the foregoing reasons, we conclude that applicant’s
identification of goods remains unacceptable, and that the examining attorney’s
requirement for an amended identification of goods was appropriate, Trademark
Act § 1(b)(2), 15 U.S.C. § 1051(b)(2); Trademark Rules 2.32(a)(6), 2.85(a), and also
that applicant’s mark is likely to cause confusion with that of the cited registrant,
Trademark Act § 2(d).
Decision: The refusal to register is AFFIRMED on both grounds.