Menard, Inc.

Trademark Trial and Appeal Board

Jun 6, 2007

No. 76538809 (T.T.A.B. Jun. 6, 2007)

Mailed:
June 6, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Menard, Inc.
________

Serial No. 76538809
Serial No. 76538810
_______

Ernest Grumbles III and Danielle I. Mattessich of Merchant
& Gould P.C. for Menard, Inc.

Florentina Blandu, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney).
_______

Before Grendel, Drost and Cataldo, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant’s appeals of the final refusals issued in
each of the above-captioned applications are hereby
consolidated and shall be decided in this single opinion.
In Serial No. 76538809, applicant seeks registration
of the mark depicted below
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. Nos. 76538809 and 76538810
2

for goods identified in the application as “whirlpools,
bathtubs, toilets, and sinks sold exclusively through
applicant’s home improvement retail stores,” in Class 11.
In Serial No. 76538810, applicant seeks registration
of the mark AQUALUX (in standard character form) for the
same goods.1
In each of the applications, the Trademark Examining
Attorney has issued a final refusal to register the mark as
to the goods identified as “whirlpools,” “bathtubs,” and
“sinks,”2 all of which are “sold exclusively through
applicant’s home improvement retail stores.” The basis for
the refusal in each application is that applicant’s mark so
resembles the mark AQUALUX, previously registered (in
standard character form) for goods identified in the

1 Both of these applications were filed on August 20, 2003, and
are based on applicant’s asserted intention to use the mark in
commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).

2 In her Office action denying applicant’s Request for
Reconsideration in each application, the Trademark Examining
Attorney expressly withdrew the Section 2(d) refusal as to
“toilets.” In view thereof, each application will proceed to
registration as to “toilets sold exclusively through applicant’s
home improvement retail stores.”

Ser. Nos. 76538809 and 76538810
3
registration as “water filtration units for domestic use;
water treatment equipment, namely, cartridge filtration
units,” in Class 11, and “portable water dispensers,” in
Class 21, as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
Applicant has appealed the final refusal in each of
the applications. Applicant and the Trademark Examining
Attorney have filed main appeal briefs. After careful
consideration of all of the evidence of record and the
arguments of counsel, we affirm the refusal to register in
each of the applications.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Ser. Nos. 76538809 and 76538810
4
The first du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. Palm Bay Imports, Inc.,
supra. The test, under the first du Pont factor, 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 terms of their overall commercial
impression 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 general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 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
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
Applying these principles in the present case, we find
that each of applicant’s marks is similar to the cited
Ser. Nos. 76538809 and 76538810
5
registered mark. Applicant’s standard character mark,
AQUALUX, indeed is identical to the cited registered mark
in terms of appearance, sound, connotation and overall
commercial impression. Although perhaps not identical,
applicant’s AQUALUX and design mark is highly similar to
the cited registered mark in terms of appearance, sound,
connotation and overall commercial impression. The only
difference applicant’s design mark and the cited registered
mark is the presence in applicant’s mark of the non-
distinctive oval background carrier device in which the
word AQUALUX prominently appears. However, it is the word
AQUALUX which dominates the commercial impression and
source-indicating significance of applicant’s mark, and
which therefore must be accorded greater weight, in our
comparison of the marks, than the mark’s minimal design
element. See In re Chatam International Inc., supra; In re
National Data Corp., supra. We do not ignore the design
element, but we find that it does not suffice to
distinguish applicant’s mark from the cited registered mark
when the marks are viewed in their entireties.
Contrary to applicant’s argument, it is immaterial
that applicant and registrant may use their marks in
conjunction with house marks or with other additional
wording in their advertisements. For purposes of
Ser. Nos. 76538809 and 76538810
6
determining the registrability of applicant’s marks, our
analysis of the similarity of the marks must be based
solely on the marks as they are depicted in the application
and the registration, respectively.
For these reasons, we find that applicant’s standard
character AQUALUX mark is identical to the cited registered
AQUALUX mark, and that applicant’s design mark is highly
similar to the cited registered mark. We find that the
first du Pont factor accordingly weighs heavily in favor of
a finding of likelihood of confusion.
We turn next to the second du Pont factor, which
requires us to determine the similarity or dissimilarity of
the goods identified in applicant’s application vis-à-vis
the goods identified in the cited registration. It is
settled that it is not necessary that the respective goods
be identical or even competitive in order to support a
finding of likelihood of confusion. That is, the issue is
not whether consumers would confuse the goods themselves,
but rather whether they would be confused as to the source
of the goods. It is sufficient that the goods be related
in some manner, or that the circumstances surrounding their
use be 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
Ser. Nos. 76538809 and 76538810
7
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 goods.
See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991); and In re International
Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Furthermore, it is settled that the greater the degree
of similarity between the applicant’s mark and the cited
registered mark, the lesser the degree of similarity
between the applicant’s goods and the registrant’s goods
that is required to support a finding of likelihood of
confusion. Where the applicant’s mark is identical to the
registrant’s mark, as it is in this case (with respect to
applicant’s standard character mark), there need be only a
viable relationship between the respective goods in order
to find that a likelihood of confusion exists. See In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB
2001); and In re Concordia International Forwarding Corp.,
222 USPQ 355 (TTAB 1983).
Applicant goods at issue herein are identified as
“whirlpools, bathtubs, ... and sinks sold exclusively
through applicant’s home improvement retail stores.” The
Ser. Nos. 76538809 and 76538810
8
goods identified in the cited registration include “water
filtration units for domestic use; water treatment
equipment, namely, cartridge filtration units.” Applicant
is correct in contending that these respective goods are
different and non-competitive in terms of nature and
function. However, as noted above, that is not the test
under the second du Pont factor. We find that applicant’s
and registrant’s goods are sufficiently related that source
confusion is likely to result if they are marketed under
the identical and/or highly similar marks at issue in this
case.
The record shows that at least two third parties,
Francke Faucets and Natural Choice, manufacture and sell
both sinks and water filtration equipment. See the
printout from the website www.plumbingworld.com attached to
the Trademark Examining Attorney’s final office action,
which includes links to product categories including “sinks
for the kitchen by Francke” and “replacement filters for
Francke.” The website www.designerplumbing.com similarly
displays product listings for “Francke GNX110-18 EuroPro
Sink” and “Francke MHX 710 Manor House Farm Sink,” as well
as for “Francke Filter Replacement Cartridge.” The Natural
Choice website (www.steamsaun.com) lists among its product
categories “water filters” and “sinks and faucets.”
Ser. Nos. 76538809 and 76538810
9
The record also establishes that water filtration
units and systems, on the one hand, and sinks, bathtubs and
whirlpools, on the other hand, are related and
complementary products, in that water filters can be and
are installed and used to filter water in bathroom and
kitchen sinks, showers and bathtubs, and whirlpools.
Indeed, “Under Sink” units are one category of water filter
system, as is shown by, inter alia, the website
www.excelwater.com (“Under Sink Water Filtration Units”
product category); the website www.home-water-purifiers-
and-filters.com (“Under Sink Water Filter ... No under sink
water filter system on the market offers such an attractive
bundle of features ... The filtration unit mounts under
your sink, out of sight...”); and the website
www.realestatejournal.com (“many consumers are ...
installing a variety of home-filtration systems, including
... elaborate under-sink systems”).
The complementary relationship between applicant’s and
registrant’s respective products is also established by
other Internet evidence of record, such as:
www.realestatejournal.com (Eliminating fuss is the main
focus of Clear Flow’s mounted water filter, which is
available for both kitchen and bathroom sinks”);
www.pureelements.biz (“Whole House Water Filter”);
Ser. Nos. 76538809 and 76538810
10
www.puresta.com (“Puresta Twinfilter – water for spas,
jacuzzis”); www.omnifilter.com (“Whole house water filter;
we make water filters for the do-it-yourselfer...);
www.superiorwatersupplies.com (“shower filters”);
www.filters2000.com (“national distributor for Sprite
shower filters, also counter top and under counter
systems”); www.moen.com (“Aquasuite Water Filtration
System... ideal for kitchen or bath installation ... filter
easily installs under your sink”); www.aquasana.com (“RHINO
Whole House Water Filtration System ... You can enjoy
bottled water quality throughout your entire home, in your
showers, sinks, bathtubs...”); www.multipure.com
(“wonderfully delicious water filters right at your kitchen
or bathroom sink”; and www.doultonusa.com (water filter
“conveniently hides under the sink”).
We note, finally, that one of applicant’s own
advertisements, made of record by applicant in response to
the first office action, displays on the same page and in
close proximity both applicant’s AQUALUX products and a
third party’s (Omni) under counter “Reverse Osmosis Water
Filtration System.” A homeowner undertaking a kitchen or
bathroom redecorating project which includes installation
or replacement of a sink, bathtub or whirlpool is likely to
also be in the market for a water filtration system to be
Ser. Nos. 76538809 and 76538810
11
installed at the same time and as part of the same project.
Applicant itself advertises these products side-by-side.
Based on this evidence, we find that applicant’s goods
and registrant’s goods, as identified in the applications
and the registration, respectively, are sufficiently
related and complementary that purchasers are likely to
assume the existence of a source connection if the goods
are or were to be marketed under the confusingly similar
marks involved in this case. The second du Pont factor
accordingly weighs in favor of a finding of likelihood of
confusion.
Under the third du Pont factor, we find that
applicant’s goods and registrant’s goods, as identified in
the applications and the registration, respectively, are or
could be marketed in the same trade channels and to the
same purchasers. With respect to trade channels, and as
noted above, applicant’s own advertisements display both
sinks and water filtration systems in close proximity to
each other. This evidence shows that these types of goods
are or can be marketed in exactly the same trade channels.
We acknowledge that applicant’s identification of
goods in each application specifically limits applicant’s
goods to those which are “sold exclusively through
applicant’s home improvement retail stores.” However, the
Ser. Nos. 76538809 and 76538810
12
identification of goods in the cited registration includes
no restrictions or limitations as to trade channels.
Applicant’s declarant Mr. Radtke, who is identified as
applicant’s Merchandising Manager of the Plumbing
Department, asserts that applicant currently does not sell
registrant’s AQUALUX products in applicant’s stores.
However, nothing would preclude applicant from carrying
registrant’s products in the future. In any event, even if
registrant’s and applicant’s products were not to be sold
in the same stores, purchasers still would be likely to
encounter both products and, given the complementary nature
of the goods, they would be likely to assume that a source
connection exists.
With respect to classes of purchasers of the
respective goods, we find that they are the same. These
purchasers would include ordinary homeowners who are
redecorating or updating a kitchen or bathroom. When they
are installing or replacing a new sink, bathtub or
whirlpool, they likely also would be in the market for a
water filtration system or unit to be installed at the same
time or as part of the same project.
For these reasons, we find that the trade channels and
classes of purchasers for applicant’s and registrant’s
respective goods are similar or the same. The third du
Ser. Nos. 76538809 and 76538810
13
Pont factor accordingly weighs in favor of a finding of
likelihood of confusion.
The fourth du Pont factor requires us to consider the
purchasing conditions in which the products are marketed,
including the care with which they would be purchased.
Again, we find that the purchasers of these goods would
include ordinary homeowners, who would have only a normal
degree of sophistication and who might be expected to
exercise only a normal amount of care in purchasing these
goods. Applicant contends that some of its whirlpools sell
for approximately two thousand dollars. Although those
particular items might be purchased with a greater degree
of care, there is no evidence that the rest of applicant’s
goods, nor registrant’s goods, are so expensive that extra
care would be exercised in their purchase. We find that
the fourth du Pont factor is neutral, at best, in our
likelihood of confusion analysis.
We turn finally to the sixth du Pont factor, which
requires us to consider the number and nature of similar
marks in use on similar goods. Applicant’s third-party
registration evidence is not probative evidence of third-
party use of AQUALUX marks. See Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992). In any event, applicant has submitted only two
Ser. Nos. 76538809 and 76538810
14
third-party registrations of AQUALUX marks, each of which
are for goods which are quite different from the goods
involved herein. We find that the sixth du Pont factor is
neutral, at best, in this case.
More generally with respect to the strength of the
registered mark, applicant argues that AQUALUX is a weak or
highly suggestive term as applied to the registrant’s
goods, and that the scope of protection to be afforded the
registered mark should be narrowed accordingly. We are not
persuaded. Although AQUALUX is somewhat suggestive in that
it combines AQUA, connoting water, and LUX, which arguably
connotes “deluxe,” we find that the mark nonetheless is
inherently distinctive and should receive the normal scope
of protection to which a distinctive mark is entitled.
Considering all of the evidence of record as it
pertains to the du Pont likelihood of confusion factors,
and for the reasons discussed above, we conclude that a
likelihood of confusion exists as between applicant’s
AQUALUX sinks, bathtubs and whirlpools sold in applicant’s
stores, and registrant’s water filtration units and
equipment sold under the same mark. These goods are not
identical, but they are complementary and related, and
would be purchased by the same homeowners who would use
both products in connection with their kitchen or bath
Ser. Nos. 76538809 and 76538810
15
redecorating or upgrade projects. We find that applicant’s
goods and registrant’s goods certainly are sufficiently
closely related that confusion is likely to result from the
use of the identical and/or highly similar marks involved
in this case. To the extent that any doubts might exist as
to the correctness of this conclusion, we resolve such
doubts against applicant. See In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
supra.

Decision: The refusal to register in each application
as to the goods identified as whirlpools, bathtubs and
sinks is affirmed. In view of the Trademark Examining
Attorney’s prior withdrawal of the refusal as to “toilets,”
the identification of goods in each application shall be
amended to “toilets sold exclusively through applicant’s
home improvement retail stores,” and the applications, as
amended, shall proceed to publication.