Masco Builder Cabinet Group

Trademark Trial and Appeal BoardNov 2, 2010

No. 77600823 (T.T.A.B. Nov. 2, 2010)

Mailed: November 2, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Masco Builder Cabinet Group ________ Serial No. 77600823 _______ Edgar A. Zarins of Masco Corporation for Masco Builder Cabinet Group. Jennifer Vasquez1, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _______ Before Holtzman, Taylor and Wellington, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Masco Builder Cabinet Group has filed an application to register on the Principal Register the mark MERILLAT ENCORE (in standard character format) for “Cabinetry” in International Class 20.2 Registration has been refused on the ground of likelihood of confusion, mistake or deception under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), with the mark in Registration No. 1 A different examining attorney was responsible for the application prior to briefing. 2 Serial No. 77600823, filed October 27, 2009, and alleging a bona fide intention to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77600823 2 3497796, ENCORE (in standard character format),3 for “Kitchen and bathroom cabinets for residential use” in International Class 20. When the refusal was made final, applicant appealed. Both applicant and the examining attorney filed briefs. We affirm the refusal to register. Our determination of the issue of likelihood of confusion is based on an analysis of all 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). The examining attorney argues that a likelihood of confusion exists between applicant’s mark MERILLAT ENCORE and the cited registered mark ENCORE because the marks have similar commercial impressions and because the goods are identical. She 3 Issued September 9, 2009. Serial No. 77600823 3 particularly argues that confusion is likely because both marks contain the identical word ENCORE and the addition of applicant’s house mark Merillat is more likely to add to the likelihood of confusion than to distinguish the marks. She further argues that the goods are identical, inasmuch as applicant’s cabinetry encompasses the registrant’s kitchen and bathroom cabinets for residential use and, thus, are likely to be encountered by the same class of potential consumers. By contrast, applicant, in urging reversal of the refusal, maintains that its applied-for mark is a composite mark with the predominant portion being applicant’s primary brand MERILLAT and that “[t]he MERILLAT brand is one of the premier names in household cabinetry and no consumer is going to be confused as to the source of the goods simply because the name ENCORE is appended to the brand name.” Br. p. 1. We first consider the goods involved in this case, and we note that the question of likelihood of confusion must be determined based on an analysis of the goods recited in applicant’s application vis-à-vis the goods recited in the cited registration. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, n. 4 (Fed. Cir. 1993); and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Where the goods in the application and/or cited registration at issue are broadly identified as to their nature and type, such Serial No. 77600823 4 that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses not only all the goods of the nature and type described therein, but that the identified goods are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In this case, we find that applicant’s goods, as identified, are so broadly worded as to encompass all types of cabinetry, including registrant’s more narrowly specified kitchen and bathroom cabinets for residential use. As such, for purposes of our likelihood of confusion analysis, the goods, channels of trade and classes of purchasers of applicant and registrant are overlapping. Indeed, our findings are supported by the record. Specifically, the examining attorney submitted definitions from Dictionary.com4 wherein “cabinetry” is defined as “cabinetwork,” and “cabinetwork” is defined as “fine furniture or other woodwork, as cabinets, chests, shelves, etc.” The examining attorney also made of record printouts from third- 4 Retrieved July 31, 2009 at http://dictionary.reference.com/browse/ cabinetry?r=66 and http://dictionary.reference.com/browse/ cabinetwork?db=luna, respectively. Serial No. 77600823 5 party websites showing that cabinet makers such as, for example, Thomasville Cabinetry (Thomasvillecabinetry.com), Medallion Cabinetry (Medallioncabinetry.com) and Homecrest Cabinetry (Homecrestcab.com) use the term “cabinetry” to identify cabinets, which would include kitchen and bathroom cabinets for residential use. Notably, applicant’s communications during prosecution and its appeal brief are completely silent on the du Pont factors relating to the relatedness of the goods, channels of trade and classes of purchasers. In view of the foregoing, those du Pont factors favor a finding of likelihood of confusion. We next compare the marks. In determining the similarity or dissimilarity of the marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 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 entireties that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a Serial No. 77600823 6 general, rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In this case, applicant’s MERILLAT ENCORE mark consists of registrant’s mark, ENCORE, plus applicant’s asserted “primary brand,” MERILLAT.5 Applicant’s mark encompasses the registered mark in its entirety; the only difference between the two being the addition of MERILLAT to applicant’s mark. It is well established that the addition of a house mark may not obviate the similarity between the marks overall or overcome a likelihood of confusion under Section 2(d). See In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE for retail clothing store and clothing and CREST CAREER IMAGES for uniforms; In re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD PETTY’S ACCU TUNE for automotive service centers and ACCUTUNE for automotive testing equipment); and Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982) (MENNEN SKIN SAVERS for hand and body lotion and SKIN SAVERS for face and throat lotion). However, “there is no rule of law that if two product marks are confusingly similar, 5 We consider the terminology “primary brand” by applicant as referring to a house mark. In addition, although applicant did not include evidence of the extent to which it has registered (particularly in light of the cancellation of applicant’s registration, of which applicant sought to claim ownership, for the mark MERILLAT and design) and used MERILLAT, the examining attorney does not dispute applicant’s “house mark” claim and, in fact, has addressed applicant’s arguments in that regard throughout the prosecution of the application and in her brief. Serial No. 77600823 7 likelihood of confusion is not removed by use of a company or house mark in association with the product mark. Rather, each case requires a consideration of the effect of the entire mark including any term in addition to that which closely resembles the opposing mark.” New England Fish Company v. The Hervin Co., 511 F.2d 562, 184 USPQ 817, 819 (CCPA 1975) citing Rockwood Chocolate Co. v. Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (CCPA 1967). In making a determination, the Board will look to see if “there are some recognizable differences in the asserted conflicting product marks or the product marks in question are highly suggestive or play upon commonly used or registered terms [such that] the addition to applicant’s mark of the housemark [is] sufficient to render the marks as a whole distinguishable.” Rockwood Chocolate Co., Inc. v. Hoffman Candy Company, 179 USPQ 743, 746 (TTAB 1973). As previously noted, applicant contends that “[t]he MERILLAT name is one of the premier names in household cabinetry and no consumer is going to be confused as to the source of the goods simply because the name ENCORE is appended to the brand name.”6 Notably, applicant has provided no evidence of the asserted preeminence of the MERILLAT name and, as such, there is nothing in this record to base a finding that MERILLAT is so 6 Br. p. 1. Serial No. 77600823 8 recognized or so highly distinctive as to be the dominant portion of applicant’s mark. Moreover, “even if that had been shown to be the case, it would only serve to aggravate the likelihood of confusion that would arise from the contemporaneous use of the marks on the respective goods.” In re Christian Dior, S.A., 225 USPQ 533, 535 (TTAB 1985) (addition of house mark DIOR to applicant’s LE CACHET DE DIOR for shirts does not obviate likely confusion with CACHET for dresses and toiletries). Viewing the ENCORE portion of applicant’s mark, we find it identical in appearance, sound, connotation and commercial impression to the entirety of registrant’s mark. Further, as discussed above, the addition of applicant’s “primary brand” or house mark to its apparent product mark, ENCORE, is not sufficient to obviate the likelihood of confusion. We simply find overall that, when viewed as a whole, the marks MERILLAT ENCORE and ENCORE are sufficiently similar that when used on overlapping goods would likely cause confusion. Accordingly, the du Pont factor of similarity of the marks favors a finding of likelihood of confusion. In sum, we conclude that purchasers and prospective purchasers familiar with the registered mark ENCORE for kitchen and bathroom cabinets for residential use would be likely to believe, upon encountering applicant’s MERILLAT ENCORE mark for Serial No. 77600823 9 cabinetry, that such goods emanate from, or are sponsored by or affiliated with the same source. Decision: The refusal to register is affirmed.