P. S. Pibbs, Inc.Download PDFTrademark Trial and Appeal BoardMar 27, 2009No. 76677938 (T.T.A.B. Mar. 27, 2009) Copy Citation 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 - 2 - 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 - 3 - 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 - 4 - 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 - 5 - [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 - 6 - 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 - 7 - 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 - 8 - 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 - 9 - 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 - 10 - 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 - 11 - 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 - 12 - 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 - 13 - 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. Copy with citationCopy as parenthetical citation