P. S. Pibbs, Inc.

Trademark Trial and Appeal Board

Mar 27, 2009

No. 76677938 (T.T.A.B. Mar. 27, 2009)

Mailed:
March 27, 2009
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re P.S. Pibbs, Inc.
________

Serial No. 76677938
_______

Anthony J. Casella of Casella & Hespos LLP for P.S. Pibbs,
Inc.

David Taylor, Trademark Examining Attorney, Law Office 112
(Angela Wilson, Managing Attorney).
_______

Before Quinn, Bucher and Wellington, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
P.S. Pibbs, Inc. seeks registration on the Principal
Register of the following mark:

for goods identified in the application as “furniture for
beauty salons, namely, chairs, mirrors, vanities, lounge
chairs, cabinets and stools” in International Class 20.1

1 Application Serial No. 76677938 was filed on June 7, 2007
based upon applicant’s claims of first use anywhere and first use
in commerce at least as early as January 1, 1995. No claim is
made to the word “Salon” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76677938
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This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has found that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
AMBIENCE (in standard character format) for “furniture,
mirrors, wall art and accessories, namely, carvings,
decorative figures, figurines and sculptures made of foam,
wood and resins and decorative furniture corbels and
sculptures reliefs made of foam, wood and resin”2 also in
International Class 20, as to be likely to cause confusion,
to cause mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case.
We affirm the refusal to register.
In arguing for registrability, applicant argues that
its mark is sufficiently different from registrant’s mark to
avoid a finding of likelihood of confusion therewith; that
the common literal element is weak; that the goods are
different and move through distinct channels of trade; and
that applicant’s consumers – purchasers of beauty salon

2 Registration No. 3091791 issued to The L.D. Kichler Co. on
April 18, 2006.
Serial No. 76677938
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equipment – will not be confused given their level of
sophistication.
By contrast, the Trademark Examining Attorney contends
that the respective marks are confusingly similar; that
applicant has not demonstrated that the cited mark is weak
in the field of furniture; and that registrant’s
identification of goods is broad enough to include
applicant’s more specialized furnishings.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. See 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); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, however, two key, although not
exclusive, considerations are the similarities between the
marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Serial No. 76677938
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Relationship of the goods

We turn first to the du Pont factor focusing on the
relationship of applicant’s goods to registrant’s goods. As
we have seen, applicant’s goods are identified as “furniture
for beauty salons, namely, chairs, mirrors, vanities, lounge
chairs, cabinets and stools” and registrant’s identification
of goods includes “furniture, mirrors, wall art and
accessories, namely, carvings, decorative figures, figurines
and sculptures … .”
Applicant contends that the respective goods and their
trade channels are, in actuality, quite different.
Applicant has introduced into the record web pages from
registrant’s website,3 supporting its conclusion that The
L.D. Kichler Company manufactures residential lighting
products. Registrant’s website indicates that Kichler.com
is “the innovative leader in decorative light fixtures,
lamps, and home accessories.” Applicant argues that
registrant’s products are sold at retail to homeowners for
household decorative purposes.
However, we cannot resort to such extrinsic evidence in
order to restrict registrant’s goods. See, e.g., In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986)

3 http://www.kichler.com

Serial No. 76677938
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[evidence that relevant goods are expensive wines sold to
discriminating purchasers must be disregarded given the
absence of any such restrictions in the application or
registration]. Hence, we must presume that registrant may
be selling its lighting products as well as its other listed
household goods to residential and commercial customers,
including the owners and operators of beauty salons.
As to its own goods, applicant shows from a catalogue
that it manufactures furniture specifically for beauty
salons and markets them directly to the operators of these
beauty salons. Because of the specialized nature of
“furniture for beauty salons …,” especially equipment such
as chairs, vanities and cabinets, we are not convinced that
applicant’s furniture would be encompassed by the
identification of “furniture” in the cited registration.
However, as pointed out by the Trademark Examining Attorney,
both listings include “mirrors.” Likelihood of confusion
may be found based upon any goods that come within the
identification of goods in the involved application or
registration. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Applicant has not countered with evidence that there are
special mirrors for beauty salons. Hence, even if we are
uncomfortable finding that “furniture” encompasses
Serial No. 76677938
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applicant’s salon furniture, we find that mirrors may well
be suited for universal usage, and therefore we must
construe these particular goods as legally identical under
the circumstances of this case.
As a result, the overlap in mirrors favors a finding of
likelihood of confusion herein.
Similarity of the marks

The critical du Pont factor that the Trademark
Examining Attorney and applicant discuss at length in their
briefs involves the similarities or dissimilarities in the
appearance, sound, connotations and commercial impressions
of the respective marks. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant’s mark consists of a square carrier device
appearing to have inscribed on it stylized letters “S” and
“A” next to the words “Salon Ambience,” in an italics font:

The mark in the cited registration is the word AMBIENCE in
standard character format.
Serial No. 76677938
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Applicant argues that when viewed in their entireties,
the marks are sufficiently different to avoid a likelihood
of confusion. True, there are obvious differences in the
appearance of these two marks if one subjects them to a
side-by-side comparison. However, under actual market
conditions, consumers generally do not have this luxury.
Hence, the proper test in determining likelihood of
confusion is not whether the marks can be distinguished in 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.
While we agree that we must consider the similarity or
dissimilarity of the marks when viewed in their entireties,
“there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of the mark, provided [that] the ultimate conclusion
rests on consideration of the marks in their entireties.
Indeed, this type of analysis appears to be unavoidable.”
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). For example, “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 a mark ….” Id. at 751.
Serial No. 76677938
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In marks such as applicant’s that contain both literal
and design features, the words are normally accorded greater
weight in making a determination as to likelihood of
confusion. This is true because it is the literal portions
of the marks that are likely to make an impression upon
purchasers and would be remembered by them when calling for
the goods or services in the marketplace. In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and
Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461,
462 (TTAB 1985). See also Giant Food, Inc. v. Nation’s Food
Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983).
Additionally, the descriptive word “Salon” has been
disclaimed, making it subordinate to the only remaining,
distinctive portion of applicant’s mark, the word
“Ambience.”
Hence, the dominant, distinctive and memorable term in
applicant’s mark, “Ambience,” is identical to the entirety
of registrant’s mark. Although we do not know exactly how
registrant uses this mark, it would seem, at worst, to be
suggestive as applied to registrant’s goods. When
applicant’s and registrant’s marks are compared in light of
the above-mentioned legal principles, we find that the marks
are quite similar in both sound and appearance.
Serial No. 76677938
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As to connotations, although applicant’s mark conveys
more specific information about its channels of trade or
features of its specialized goods, this does not
sufficiently distinguish applicant’s mark from the cited
mark. Especially to applicant’s customers, namely “salon”
owners and operators, the mere addition of the word “Salon”
is not sufficient to avoid a likelihood of confusion herein.
Whether the mirror is supplied to the salon under
applicant’s composite mark or under registrant’s single
word, standard character mark, the connotations present in
both cases involve ‘the surrounding atmosphere or
environment.’
Furthermore, as to the commercial impressions
engendered by the respective marks, when these marks are
considered as applied to identical goods, we find that
registrant’s mark and applicant’s mark would both appear to
represent some form of “Ambience” brand of furnishings.
Consumers familiar with registrant’s AMBIENCE furniture and
decorative accessories will mistakenly believe that “Salon
Ambience” identifies a line of mirrors, and perhaps other
furnishings, for beauty salons, emanating from registrant.
None of the other identifiable components in applicant’s
special-form, composite mark detracts from this impression.
Serial No. 76677938
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Hence, we find that these marks convey substantially the
same commercial impressions.
Finally, where, as in the present case, the marks
appear on, at least in part, legally identical goods, the
degree of similarity between the marks that is necessary to
support a finding of likely confusion declines. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992).
In sum, applicant has taken the entirety of
registrant’s AMBIENCE mark and simply added the merely
descriptive wording “Salon” to it. This mere addition of
descriptive wording does not serve sufficiently to
distinguish the marks as applied to identical or closely
related goods. See Coca-Cola Bottling Co. v. Joseph E.
Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA
1975); and In re United States Shoe Corp., 229 USPQ 707
(TTAB 1985).
As to this critical du Pont factor, despite the
differences in the appearance of the marks noted above, we
agree with the Trademark Examining Attorney that the strong
similarities support a finding of likelihood of confusion.
The number and nature of similar marks registered in connection with
similar goods.

Serial No. 76677938
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The existence of third-party registrations and
applications for “Ambience” marks and variations thereof is
of little relevance to our analysis. Applicant submitting a
listing of third-party registrations obtained from a United
States Patent and Trademark Office computerized TESS listing
of marks containing the term “Ambience” (or its variant
spelling, “Ambiance”). The listing does not identify the
goods and/or services covered by the listed
registrations. Nonetheless, based on this listing,
applicant argues that the term is weak and diluted, and
that registrant’s mark is entitled to only a narrow scope of
protection.
In order to make third-party registrations of record
during ex parte examination, copies of the appropriate
United States Patent and Trademark Office electronic
printouts of the relevant records must be submitted. See
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
However, the Trademark Examining Attorney considered the
search summary without objection to the form, effectively
waiving his right to object thereto.
Thus, while we have considered the TESS summary, it is
of virtually no probative value. The Trademark Examining
Attorney points out that only thirty-three of the 144
records listed by applicant are currently live
Serial No. 76677938
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registrations. Further, to have any relevance, the marks
must cover goods similar to the ones involved in the appeal.
Of these thirty-three registrations, there is no indication
that any of the referenced marks are used in connection
with mirrors, furniture or related decorative
accessories. We hasten to add that, even if applicant had
submitted copies of such subsisting registrations, they are
incompetent to prove that these marks are in use or that the
public is exposed to the same or similar marks in the
marketplace. See Smith Bros. Mfg. Co. v. Stone Mfg. Co.,
476 F.2d 1004, 177 USPQ 462 (CCPA 1973); Fort Howard Paper
Co. v. Kimberly-Clark Corp., 221 USPQ 732 (TTAB 1984) and In
re Hub Distributing Inc., 218 USPQ 284 (TTAB 1983).
Finally, in addition to the fact that we have no
evidence of use in the marketplace of any “Ambience” /
“Ambiance” marks on related goods or services, even if we
were to find, based upon applicant’s evidence, that
registrant’s mark is weak and entitled to a narrow scope of
protection, the scope is still broad enough to prevent the
registration of a similar mark for closely-related goods
and/or services. See In re Farah Manufacturing Co., Inc.,
435 F.2d 594, 168 USPQ 277, 278 (CCPA 1971).
The conditions under which and buyers to whom sales are made

Serial No. 76677938
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It appears certain that applicant’s goods would be
purchased by fairly knowledgeable purchasers, such as beauty
salon owners and operators. On the other hand, as argued by
the Trademark Examining Attorney, the involved marks
herein are so similar that even sophisticated purchasers
may still be subject to source confusion. Hence, at best
for applicant, we tally this as a neutral du Pont factor in
our determination of likelihood of confusion.
Conclusion
In conclusion, we find that the respective mirrors
herein are legally identical, and that the marks are so
highly similar that even sophisticated purchasers may be
confused as to the source or origin of these goods.
Decision: The Trademark Examining Attorney’s refusal
to register under Section 2(d) of the Lanham Act is hereby
affirmed.