Mannington Mills, Inc.

Trademark Trial and Appeal Board

Jan 28, 2004

No. 76196495 (T.T.A.B. Jan. 28, 2004)

Mailed: January 28, 2004
Paper No. 13
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mannington Mills, Inc.
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Serial No. 76196495
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Sherry H. Flax of Saul Ewing LLP for Mannington Mills, Inc.
Samuel E. Sharper, Jr., Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Mannington Mills, Inc. (a New Jersey corporation)
filed an application on January 19, 2001, to register on
the Principal Register the mark GUARDIAN for goods
ultimately amended to read as follows: “reinforced vinyl
polymer comprising a component of vinyl floor covering” in
International Class 27. The application is based on
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76196495
2
applicant’s claimed date of first use and first use in
commerce of October 2000.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to its identified goods, so
resembles the registered mark GUARDIAN for “carpets, carpet
squares and floor covering” in International Class 27,1 as
to be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but applicant did not request an
oral hearing.
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court 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
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003).
The involved marks are identical. This fact “weighs
heavily against applicant.” In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984). Indeed, the fact that an applicant has selected the
1 Registration No. 1355589, issued August 20, 1985 on the
Principal Register, Section 8 affidavit accepted, Section 15
affidavit acknowledged.
Ser. No. 76196495
3
identical mark of a registrant “weighs [so] heavily against
the applicant that applicant’s proposed use of the mark on
“goods...[which] are not competitive or intrinsically
related [to registrant’s goods]...can [still] lead to the
assumption that there is a common source.” In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir.
1993). “The greater the similarity in the marks, the
lesser the similarity required in the goods or services of
the parties to support a finding of likelihood of
confusion.” 3 J. McCarthy, McCarthy on Trademarks and
Unfair Competition, §23:20.1 (4th ed. 2001).
We turn to a consideration of the cited registrant’s
goods and applicant’s goods. Applicant’s position is that
“there are sufficient differences between the goods and
channels of trade that confusion is unlikely.” (Brief, p.
2.) Specifically, applicant argues that the item “floor
coverings” in the registrant’s goods is not an acceptable
identification of goods and is too broad; that registrant’s
goods are carpet and carpet squares, while applicant’s
goods are a component of vinyl flooring; and that “the fact
that Applicant’s and Registrant’s goods are related to
flooring does not mean, absent supporting evidence, that
Ser. No. 76196495
4
these products would be regarded by prospective purchasers
as coming from or sponsored by the same source.” (Brief,
p. 3.)
The Examining Attorney contends that the goods are
closely related as the registrant’s identification of goods
includes “floor coverings,” which encompasses vinyl floor
coverings, and applicant’s goods are a component of vinyl
floor covering;2 that both applicant’s and registrant’s
goods are each used “to cover floors, applied to flooring
and used with flooring” (brief, p. 6); that there is no
restriction in either identification of goods as to trade
channels and purchasers; and that the issue is not whether
consumers can distinguish between the goods, but whether
there is a likelihood of confusion as to the source of the
goods.
In support of his position, the Examining Attorney
submitted evidence in the form of printouts of (i) several
third-party registrations and (ii) various Internet web
2 The Examining Attorney correctly points out that applicant’s
assertion that “floor coverings” is an unacceptable
identification of goods is an impermissible attack on the
validity of this aspect of the cited registration. See 3 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition,
§23:80 (4th ed. 2001).
Ser. No. 76196495
5
sites, all showing that the same entity (including
applicant) offers both carpet and vinyl flooring.
It is well settled that goods (or services) need not
be identical or even competitive to support a finding of
likelihood of confusion, it being sufficient that the goods
(or services) are related in some manner or that the
circumstances surrounding their marketing are such that
they would likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB
1992); and In re International Telephone and Telegraph
Corporation, 197 USPQ 910 (TTAB 1978).
In reviewing the identification of goods as well as
applicant’s specimens, it is clear that applicant’s product
is a component of and a selling feature of applicant’s own
vinyl flooring products. The label specimen is shown
below.
Ser. No. 76196495
6
In applicant’s brochure there is a section titled
“Frequently Asked Questions About GUARDIAN.” Some examples
follow:
Q. Are Guardian products as heavy and
hard to handle as the competition?
A. No. The products with Guardian
Innercore are only slightly heavier
than our existing products.
Q. Will products with Guardian cost
more?
A. No. Mannington will not add a price
premium for this performance
enhancement.
Q. Will all Mannington products have
the Guardian Innercore?
A. Initially, three products will be
manufactured with Guardian: Vega III,
Cornerstone and Luminesse. By the
fall, the remaining Mannington product
Ser. No. 76196495
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offerings from Bronze through Platinum
will be offered with this performance
feature.
Further, in the brochure, applicant promotes its goods
as “tough Innercore construction,” “guaranteed not to rip,
tear, gouge or permanently indent” and “protects against
bottom-up staining and moisture.” Applicant’s component
product is used within its own goods, which are offered to
the general public. Thus, this record shows that the
ultimate consumers will definitely come into contact with
applicant’s mark for its component of vinyl flooring. In
addition, applicant’s materials show that this component is
promoted to such purchasers. In effect, applicant’s goods
are sold in the same channels of trade and promoted to the
same purchasers as vinyl flooring.
Applicant’s component of vinyl flooring is closely
related to the “floor coverings” identified in registrant’s
registration, since “floor coverings” include vinyl
coverings. Moreover, even if we consider only the
“carpets” and “carpet squares” identified in registrant’s
registration, we find that the third-party registrations
and Internet evidence submitted by the Examining Attorney
demonstrates a sufficient relatedness between applicant’s
and registrant’s goods to support a finding of likelihood
of confusion. Thus, we find that the goods in the cited
Ser. No. 76196495
8
registration (which include “floor coverings”) and
applicant’s goods (a component in vinyl floor covering) are
related goods.
There is no restriction as to trade channels or
purchasers in either identification of goods and, as
explained above, the record shows that applicant’s
component product is marketed to the general public. The
evidence shows that the goods travel in the same channels
of trade to the same classes of purchasers, namely, the
public at large.
Regarding the du Pont factor of the fame of the prior
mark, applicant asserts that the cited mark is not famous.
In general, fame does not play a role in ex parte appeals
because evidence to demonstrate fame is not available to
Examining Attorneys. Although evidence of fame can be
dispositive in finding likelihood of confusion, the absence
of such evidence does not compel a result of no likelihood
of confusion. In this case, the various du Pont factors on
which we do have evidence persuade us that confusion is
likely.
Applicant argues that “GUARDIAN is a common term
subject to wide use as a mark” and there are “dozens of
registered marks comprised of the term GUARDIAN, and dozens
more that include the term GUARDIAN” (brief, p. 3); that
Ser. No. 76196495
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there are two registrations which include GUARDIAN in
International Class 27 (Registration No. 1144318 for the
mark GUARDIAN STEP (STEP disclaimed) for “safety mats” and
the cited registered mark) and one abandoned application;
and that the “term GUARD appears in dozens of registrations
for floor covering and related goods in International Class
27. [Applicant’s list of five registration numbers
omitted].” (Brief, p. 4.)
Applicant did not provide copies of the single third-
party registration for a GUARDIAN-component mark (GUARDIAN
STEP) or of the five registrations for GUARD marks, and the
Board does not take judicial notice of registrations.
Thus, the probative value of this evidence is extremely
limited. See In re Smith and Mehaffey, 31 USPQ2d 1531
(TTAB 1994); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB
1992); and In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
Of course, the abandoned application has virtually no
probative value on the issue of registrability, as it is
evidence only of the fact that the application was filed.
To the extent that applicant is arguing that the cited
mark is weak, we point out that there is only a single
third-party registration for a mark which includes the word
GUARDIAN and, further, that third-party registrations are
not evidence that the marks shown therein are in use. See
Ser. No. 76196495
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Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992).
Decision: The refusal to register under Section 2(d)
is affirmed.