L & W Supply Corporation

Trademark Trial and Appeal Board

Sep 25, 2009

No. 77320069 (T.T.A.B. Sep. 25, 2009)

Mailed: September 25, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re L & W Supply Corporation
________

Serial No. 77320069
_______

Pradip Sahu of USG Corporation for L & W Supply
Corporation.

John M. Gartner, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Seeherman, Hairston and Grendel, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On November 2, 2007 L & W Supply Corporation filed an
application to register the mark L & W SUPPLY (standard
character format) for services originally identified as
“retail store services featuring building construction
materials; wholesale stores featuring building construction
materials” in International Class 35; and “distribution
THIS OPINION IS NOT A CITABLE
PRECEDENT OF THE TTAB
Ser No. 77320069
2
services, namely, delivery of building construction
materials” in International Class 39.1
On February 15, 2008, the trademark examining attorney
issued an office action refusing registration under Section
2(d) of the Trademark Act on the ground that applicant’s
mark, when used in connection with applicant’s services, so
resembles the previously registered mark L & W STONE
CORPORATION (STONE CORPORATION disclaimed) for “wholesale
distributorship featuring building and landscape materials,
namely, landscaping stones, building stones, fabricated
stones, stone care products, home and garden accents and
pond and waterfall kits” in International Class 35; and
“manufacture of general product lines in the field of
landscaping stones, building stones, fabricated stones,
stone care products, home and garden accents and pond and
waterfall kits to the order and specification of others” in
International Class 40,2 as to be likely to cause confusion.
The examining attorney also refused registration under
Sections 1, 2, and 45 of the Trademark Act on the ground
that the specimen submitted with the application does not
show use of the mark in connection with any of the services

1 Serial No. 77320069, alleging a date of first use anywhere and
a date of first use in commerce of September 30, 1994 for the
services in both classes.
2 Registration No. 3296319, issued September 25, 2007.
Ser No. 77320069
3
recited in the application as required by Trademark Rules
2.56 and 2.76.
Finally, the examining attorney required applicant to
submit a disclaimer of the word SUPPLY.
On August 14, 2008, applicant filed a response wherein
it argued against the refusals. Applicant also submitted a
disclaimer of the word SUPPLY.
The examining attorney accepted the disclaimer, but
was not persuaded by applicant’s arguments with respect to
the refusals, and on September 8, 2008 issued a final
office action in connection therewith.
On March 5, 2009, applicant filed a request for
reconsideration whereby it attempted to overcome the
likelihood of confusion refusal by amending its recitation
of services as follows: “retail store services featuring
building construction materials, the aforementioned
services do not include selling stone products to
retailers; wholesale stores featuring building construction
materials, the aforementioned services do not include
selling stone products to retailers” in International Class
35; and “distribution services, namely, delivery of
building construction materials, the aforementioned
services do not include distribution of stone products to
retailers” in International Class 39. While applicant
Ser No. 77320069
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continued to argue that the initial specimen shows use of
the mark for the services in both classes, it nonetheless
submitted a substitute specimen.
On March 23, 2009, the examining attorney issued an
office action wherein he accepted applicant’s amendment to
the recitation of services, but maintained the refusal to
register on the ground of likelihood of confusion.
Further, the examining attorney stated that the substitute
specimen was acceptable for the Class 39 services, but not
the Class 35 services. Specifically, he stated at page 4,
“the examining attorney finds nothing in the submitted
specimen that references the identified Class 35 services.”
Applicant has appealed, and applicant and the
examining attorney have filed briefs.
Specimen Refusal
We first consider the specimen refusal. As noted
above, in his March 23, 2009 office action, the examining
attorney stated that the substitute specimen was acceptable
for the Class 39 services, but not the Class 35 services.
However, in the briefs on the case, both applicant and the
examining attorney argue whether the substitute specimen is
acceptable for the Class 39 services. Under the
circumstances, we deem the examining attorney to have
withdrawn the refusal as to the acceptability of the
Ser No. 77320069
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substitute specimen for the Class 35 services, and
maintained the refusal as to the acceptability of the
initial and substitute specimen for the Class 39 services.
The issue on appeal, therefore, is whether the initial or
substitute specimen shows use of the mark for applicant’s
Class 39 “distribution services, namely, delivery of
building construction materials, the aforementioned
services do not include distribution of stone products to
retailers.”
Applicant’s substitute specimen, consisting of a
brochure, is reproduced below.

Ser No. 77320069
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According to the examining attorney, the specimen is
unacceptable for the Class 39 services because “the
specimen does not appear to mention delivery services.”
(Brief, unnumbered p. 24) Essentially, the examining
attorney is requiring that the specimen expressly state
“delivery services.”
A service mark specimen must show the mark used in the
sale or advertising of the services recited in the
application. Trademark Rule 2.56(b)(2). Where a mark is
used in advertising the services, the specimen must show an
association between the mark and the services for which
registration is sought. TMEP §1301.04(b) (5th ed. 2007).
However, to create an association between the mark and the
services, the specimen does not have to repeat the wording
in the recitation of services.
In this case, applicant’s mark, L & W SUPPLY, is shown
on the bottom left hand portion of the brochure.
Applicant’s “Services” are listed above the mark and
include “Boom Truck Deliveries.” In addition, the brochure
states: “Whether you need drywall, acoustical ceiling tile
and grid, plaster, steel, insulation, joint treatments or
other products, we’ll deliver everything you need to get
the job done on time and on budget.” (emphasis added)
Finally, the brochure contains three pictures; the first
Ser No. 77320069
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shows a truck fully loaded with building construction
materials; the second shows the truck with only a few such
materials; and the third shows the truck empty and off-
loaded materials next thereto.
In view of the foregoing, we find that the substitute
specimen clearly shows applicant’s mark L & W SUPPLY used
in connection with the Class 39 “distribution services
namely, delivery of building construction materials, the
aforementioned services do not include distribution of
stone products to retailers.”3 (emphasis added)
Likelihood of Confusion Refusal
We next turn to the likelihood of confusion refusal.
Our determination of the issue of likelihood of confusion
is based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also: In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and

3 Applicant and the examining attorney devote much of the
argument in their briefs to whether the “Stock & Scatter
Services” listed on the specimen are the equivalent of “delivery
services.” In view of our above finding, we need not reach that
question. Also, we need not reach the question of whether the
initial specimen shows use of applicant’s mark for the Class 39
services.
Ser No. 77320069
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the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
The examining attorney contends that the marks are
highly similar in that they include the identical term,
L & W; and that the evidence of record shows that
applicant’s recited services are related to those of the
registrant. Applicant, on the other hand, argues that the
marks are distinguishable; that the term L & W is widely
used in many fields; that marks consisting of or containing
such term are weak marks which are therefore entitled to a
narrow scope of protection; and that registrant’s mark is
not famous. In addition, applicant argues that in view of
the exclusion language in its recitation of services,
applicant’s services are distinct from those of registrant;
that the respective services travel in different channels
of trade and are purchased by sophisticated purchasers; and
that it is aware of no instances of actual confusion.
We first consider the services. Although applicant
amended its recitation of services explicitly to preclude
any overlap with registrant’s recited services, it is well
established that it is not necessary that the respective
services be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it
Ser No. 77320069
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is sufficient that the services are related in some manner,
or that the circumstances surrounding their marketing are
such that they would be likely to be encountered by the
same persons in situations that would give rise, because of
the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
source or that there is an association or connection
between the sources of the respective services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978).
Applying these principles to applicant’s Class 35
“wholesale store services featuring building construction
materials, the aforementioned services do not include
selling stone products to retailers” and registrant’s Class
35 “wholesale distributorship featuring building and
landscape materials, namely, landscaping stones, building
stones, fabricated stones, stone care products, home and
garden accents and pond and waterfall kits,” we find that
such services are related.
Both applicant and registrant offer wholesale
store/distributorship services that feature types of
building construction materials. In applicant’s case, it
is essentially all building construction materials with the
Ser No. 77320069
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exception of stone products; in registrant’s case, it is
stone products. In the absence of any other limitations in
applicant’s recitation of services, we must presume that
applicant’s wholesale stores feature materials such as
mortar and concrete, grout and sand; such materials can be
used in building structures made from stone. In other
words, applicant and registrant sell complementary building
construction materials.
The question is not whether applicant and registrant
are selling the identical building construction materials,
but whether a purchaser might believe that there is a
relationship or connection between the source of the
services if the services are offered under the same or
similar marks. In this case, purchasers are likely to
believe that there is a relationship or connection between
applicant’s wholesale store services and registrant’s
wholesale distributorship because of the complementary
nature of the building construction materials sold in their
respective stores/distributorship.
Insofar as the channels of trade are concerned, we
find that there is at least some overlap. The examining
attorney submitted several use-based third-party
registrations that cover wholesale store
services/distributorships featuring building materials.
Ser No. 77320069
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Because stone products are types of building materials, we
believe it is reasonable to view the identifications in
these registrations as encompassing wholesale
stores/distributorships that feature the sale of stone
products as part of the sale of building materials. There
certainly is no evidence that stone products are of such a
specialized nature that they would not normally be sold in
such stores/distributorships. Thus, to the extent that
wholesale stores/distributorships sell building
construction materials, including stone products, the
channels of trade overlap.
In any event, there is no question that applicant’s
and registrant’s services would come to attention of the
same purchasers. The relevant purchasers for these
services include retailers and professional contractors.
For example, a contractor who is installing a stone
fireplace in a home could purchase stone from registrant
and later purchase concrete and grout from applicant.
With respect to conditions of sale, we recognize that
retailers and professional contractors may exercise some
degree of care in selecting the wholesale
store/distributorship for purchases of building
construction materials. However, “even careful purchasers
Ser No. 77320069
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are not immune from source confusion.” In re Total Quality
Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).
In view of the foregoing, we find that applicant’s
Class 35 “wholesale stores featuring building construction
materials, the aforementioned services do not include
selling stone products to retailers” and registrant’s Class
35 “wholesale distributorship featuring building and
landscaping materials, namely, landscaping stones, building
stones, fabricated stones, stone care products, home and
garden accents and pond and waterfall kits” are
sufficiently related that, if offered under the same or
similar marks, confusion is likely to result.
We next consider the marks. We must determine whether
applicant’s mark L & W SUPPLY and the registrant’s mark
L & W STONE CORPORATION are similar or dissimilar when
compared in their entireties in terms of appearance, sound,
connotation and commercial impression. Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 their overall commercial
impression that confusion as to the source of the services
offered under the respective marks is likely to result.
Ser No. 77320069
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The focus is on the recollection of the average purchaser,
who normally retains a general rather than specific
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 119 USPQ 106 (TTAB 1975). Furthermore, although the
marks at issue must be considered in their entireties, it
is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
When applicant’s mark L & W SUPPLY and registrant’s
mark L & W STONE CORPORATION are considered in their
entireties, giving appropriate weight to the features
thereof, we find that the similarities outweigh their
differences.
The term L & W is the dominant portion of both
applicant’s and registrant’s marks. Although the marks
include other wording, it is this portion of the marks that
conveys the strongest impression. The disclaimed and
descriptive terms in the marks, SUPPLY and STONE
CORPORATION, are not ignored, but the fact is that
purchasers are more likely to rely on the nondescriptive
portion of the marks, that is, the term L & W, as an
Ser No. 77320069
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indication of source. See National Data Corp., 224 USPQ2d
at 751 (“That a particular feature is descriptive or
generic with respect to the involved goods or services is
one commonly accepted rationale for giving less weight to a
portion of mark …”). Furthermore, L & W is the first term
purchasers will see or hear when encountering registrant’s
mark L & W STONE CORPORATION, making it more likely to be
remembered by purchasers when they later encounter
applicant’s mark L & W SUPPLY in connection with related
services. We find, therefore, that the marks are similar
in sound and appearance.
Insofar as meaning is concerned, the term L & W
itself appears to have no intrinsic meaning in relation to
the involved services. In any event, whatever connotation
it might have as used in connection with applicant’s
wholesale stores, it would have the same connotation as
used in connection with registrant’s wholesale
distributorship.
Although we have focused on the dominant portion of
the marks, which, as indicated above, are identical, we
also have considered the marks in their entireties. And,
in doing so, we find that they engender substantially
similar overall commercial impressions.
Ser No. 77320069
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Keeping in mind that the comparison of the marks is
not necessarily made on a side-by-side basis and that
recall of the marks is often hazy and imperfect, the
differences in the marks are not so significant that they
are likely to be remembered by purchasers when seeing these
marks at different times in connection with related
services. Even if purchasers remember the specific
differences in the marks, they are likely to perceive
L & W SUPPLY as simply a variation of registrant’s mark
L & W STONE CORPORATION, and assume that applicant’s mark
identifies wholesale stores featuring building construction
materials coming from the same or an affiliated company,
rather than a different source. We find, therefore, that
applicant’s mark L & W SUPPLY is similar to registrant’s
mark L & W STONE CORPORATION.
Applicant, in contending that the marks are not
similar, asserts that the term L & W is widely used in many
fields; and that marks consisting of or containing the term
are weak marks which are entitled to a narrow scope of
protection. In support of its contention, applicant
submitted two third-party registrations for L & W marks and
the results of an Internet search of the term L & W (thirty
hits).
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This evidence is of limited probative value for two
reasons. First, there is no evidence about the extent of
these third-party uses. As the Federal Circuit has stated,
“[t]he probative value of third-party trademarks depends
entirely upon their usage.” Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee, 73 USPQ2d at 1693.
Second, the third-party uses are unrelated to the services
involved herein.4 In re Melville Corp., 18 USPQ2d 1386,
1388-89 (TTAB 1991) [“Registrations for goods unrelated to
the clothing field are irrelevant to our discussion”]; SBS
Products Inc. v. Sterling Plastic & Rubber Products Inc., 8
USPQ2d 1147, 1149 n.6 (TTAB 1988) [“E]ven if evidence of
such third-party use were submitted, it would be of no aid
to respondent herein where the third-party usage was for
goods unrelated to either petitioner’s skin care products
or respondent’s stuffing box sealant”].
In short, we cannot conclude that there is such
significant third-party use of L & W marks or trade names
for services related to those involved herein that
purchasers are likely to make a distinction between

4 The third-party uses include, inter alia, insurance, car care,
sports promotions, manufacturing, indoor shooting, private
investigations, and books.

Ser No. 77320069
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applicant’s mark and registrant’s mark when used in
connection with their respective services.
We agree with applicant that there is no evidence in
this record that registrant’s mark is famous, but it need
not be famous in order to be entitled to protection.
With regard to applicant’s assertion that it is aware
of no instances of actual confusion occurring as a result
of the contemporaneous use of the marks of applicant and
registrant, we note that, while a factor to be considered,
the absence or presence of actual confusion is of little
probative value where we have little evidence pertaining to
the nature and extent of the use by applicant and
registrant. Moreover, the test under Section 2(d) is not
actual confusion, but likelihood of confusion. See In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003) [“uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value.”].
Accordingly, we find that applicant’s mark L & W
SUPPLY for “wholesale stores featuring building
construction materials, the aforementioned services do not
include selling stone products to retailers” is likely to
cause confusion with registrant’s mark L & W STONE
CORPORATION for “wholesale distributorship featuring
Ser No. 77320069
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building and landscaping materials, namely, landscaping
stones, building stones, fabricated stones, stone care
products, home and garden accents and pond and waterfall
kits.”
In view of our finding with respect to the above Class
35 services of applicant and registrant, we need not decide
the issue of likelihood of confusion vis-à-vis applicant’s
Class 35 “retail store services featuring building
construction materials, the aforementioned services do not
include selling stone products to retailers” and
registrant’s Classes 35 and 40 services. In order to
affirm the refusal as to applicant’s Class 35 services, it
is only necessary that we find likelihood of confusion with
respect to at least one of the services in that class.
See, e.g., Tuxedo Monopoly, Inc. v. General Mills Fun
Group, Inc., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981).
As for applicant’s Class 39 “distribution services
namely, delivery of building construction materials, the
aforementioned services do not include distribution of
stone products to retailers,” we find that it has not been
established that these services are related to registrant’s
Class 35 “wholesale distributorship featuring building and
landscape materials, namely, landscaping stones, building
stones, fabricated stones, stone care products, home and
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garden accents and pond and waterfall kits” or Class 40
“manufacture of general product lines in the field of
landscaping stones, building stones, fabricated stones,
stone care products, home and garden accents and pond and
waterfall kits to the order and specification of others.”
With respect to the relatedness of applicant’s Class
39 services and registrant’s Class 35 services, the
examining attorney submitted one use-based third-party
registration that covers distributorships in the field of
building materials and delivery of building materials.
There is no evidence, however, as to the asserted
relatedness of applicant’s Class 39 services and
registrant’s Class 40 services.
Obviously, the respective services are different in
nature inasmuch as applicant’s Class 39 services are
delivery services whereas registrant’s Class 35 services
are wholesale distributorship services and its Class 40
services are custom manufacture services. In view of the
different nature of the respective services, and based on
the record before us, we see the likelihood of confusion
refusal as to applicant’s Class 39 services as amounting to
only a speculative, theoretical possibility,
notwithstanding the use of similar marks in the broad field
of services involving building materials. Language by our
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primary reviewing court is helpful in resolving the issue
of likelihood of confusion as to these services:
We are not concerned with mere theoretical
possibilities of confusion, deception, or mistake
or with de minimis situations but with the
practicalities of the commercial world, with
which trademark laws deal.

Electronic Design & Sales, Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
quoting Witco Chem. Co. v. Whitfield Chem. Co., 418 F.2d
1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969).
Decision: The refusal to register applicant’s mark on
the ground that the specimen does not show use of the mark
for the Class 39 services is reversed. The refusal to
register applicant’s mark under Section 2(d) is affirmed as
to the Class 35 services and reversed as to the Class 39
services. The application will proceed to registration for
the Class 39 services only.