Restoration Hardware, Inc.

Trademark Trial and Appeal Board

Jun 21, 2012

No. 85064187 (T.T.A.B. Jun. 21, 2012)

Mailed: June 21, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Restoration Hardware, Inc.
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Serial No. 85064187
_______

Mark A. Steiner, Duane Morris LLP, for Restoration
Hardware, Inc.

Giselle M. Agosto, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Kuhlke, Ritchie and Wolfson, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Restoration Hardware, Inc., applicant, filed an
application to register the mark MAXWELL in standard
characters for goods ultimately identified as “leather
furniture, namely, chairs, loveseats, couches, sofas,
sleeper sofas, ottomans, chaise lounges” in International
Class 20.1

1 Application Serial No. 85064187, filed on June 16, 2010,
alleging first use and first use in commerce in 2005 under
Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a).

THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85064187
2
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 used on its identified goods, so
resemble each of the two registered marks as to be likely
to cause confusion, mistake or deception. The two
registered marks are MAXWELL2 in typed form for “fabric
products; namely drapery fabric, upholstery fabric, quilted
bedspreads, bedskirts, pillow cases, pillow shams,
coverlets and duvet covers,” in International Class 24, and
MAXWELL HOME & GARDEN3 in standard characters for “fabrics
for the manufacture of indoor and outdoor furniture
upholstery; fabrics for the manufacture of furniture
accessories, namely, furniture and chair covers, throws,
cushions and cushion covers; fabrics for the manufacture of
wall coverings, namely, fabric wall tiles, wall
accessories, namely, bedspreads, coverlets, duvet and futon
covers, comforters, bed covers, bed skirts, pillows and
pillow covers, pillow cases and pillow shams; fabrics for
the manufacture of table cloths” in International Class 24.
Maxwell Fabrics Ltd. is the listed owner of both of the
registrations.

2 Registration No. 1829457, issued on April 5, 1994, Section 8
and 15 declaration accepted and acknowledged, renewed.

3 Registration No. 3523276, issued on October 28, 2008.
Serial No. 85064187
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When the refusals were made final, applicant appealed
and briefs have been filed.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of 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 Co., 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/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We begin with the du Pont factor of the similarity of
the marks, i.e., whether applicant’s mark MAXWELL and
registrant’s marks MAXWELL and MAXWELL HOME & GARDEN are
similar or dissimilar when compared in their entireties in
terms of appearance, sound, connotation and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005).
Applicant’s mark MAXWELL is identical to the mark
MAXWELL in Registration No. 1829457. With regard to the
mark MAXWELL HOME & GARDEN in Registration No. 3523276, it
Serial No. 85064187
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is well settled that marks must be considered in their
entireties, not dissected or split into component parts and
each part compared with other parts. It is the impression
created by the involved marks, each considered as a whole,
that is important. See Kangol Ltd. v. KangaROOS U.S.A.
Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992).
However, “[t]hat a particular feature is descriptive [or
otherwise lacking in distinctiveness] ... with respect to
the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark...”
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). We find that the dominant portion of
this mark is the term MAXWELL inasmuch as it is the first
word in the mark and the phrase HOME & GARDEN is suggestive
of the purpose of the goods. Palm Bay, 73 USPQ2d at 1692.
The evidence of record supports the suggestive nature of
the terms HOME and GARDEN. See, e.g., website printouts
showing “Home” and “Outdoor & Garden” used as category
headings for certain types of furniture products attached
to June 2, 2011 Office Action.4 Applicant argues that “it

4 The examining attorney also attached the printout of the search
results for the searches “home furniture” and “garden furniture”
from the Google search engine. These excerpts do show use of the
terms in connection with describing a category of furniture but
they are of limited probative value. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir.
2007) (“Search engine results-which provide little context to
Serial No. 85064187
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would be unreasonable to assume that consumers will believe
that the phrase “HOME & GARDEN” describes a feature of
Applicant-Appellant’s leather furniture [because] [t]here
is no evidence in the record that supports the idea that
consumers would believe that leather furniture is
appropriate for use in a garden.” Br. p. 7. However, it
is not unreasonable to believe the word “HOME” suggests the
products sold under MAXWELL are for home or residential use
as opposed to commercial use. While the phrase “HOME &
GARDEN” embraces more expansive residential uses both in
and outside of the house, it still suggests residential
use. In view thereof, applicant’s mark is identical to the
dominant portion of registrant’s mark MAXWELL HOME &
GARDEN.
Viewing the marks in their entireties, applicant’s
mark is identical to one and very similar in sound,
appearance, connotation and commercial impression to the
other of the registrant’s marks.
Applicant argues under the sixth du Pont factor that
the term MAXWELL is weak in this field and relies on

discern how a term is actually used on the webpage that can be
accessed through the search result link – may be insufficient to
determine the nature of the use of a term or the relevance of the
search results to registration considerations.”) See also In re
Remacle, 66 USPQ2d 1222, n. 2 (TTAB 2002).

Serial No. 85064187
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third-party registrations in support of this contention.5
First, it is well-settled that third-party registrations
are not evidence of third-party use of the registered marks
in the marketplace, for purposes of the sixth du Pont
factor. Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d
200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992); In re Davey
Products Pty Ltd., 92 USPQ2d 1198 (TTAB 2009). In
addition, there are only two referenced third-party
registrations, one of which has other distinguishing
elements (Reg. No. 34021225 MAXWELL & WILLIAMS) and the
other is for different goods (Reg. No. 2524374 MAXWELL for
beds).6
Applicant also relies on third-party registrations7 for
other marks to suggest that it is common in this industry

5 The examining attorney’s objection to applicant’s reference to
these registrations is denied inasmuch as she did not advise the
applicant during prosecution that the reference was insufficient
and addressed the third-party registrations on their merits. In
re Boyd Gaming Corp., 57 USPQ2d 1944, 1945 n.4 (TTAB 2000).
While these references were provided in a request for
reconsideration, it was filed long prior to the deadline for
filing the appeal and the examining attorney denied the request
for reconsideration also prior to the expiration of the appeal
period, thus permitting applicant an opportunity to add to the
record of the application. See In re 1st USA Realty
Professionals, Inc., 84 USPQ2d 1581 (TTAB 2007).

6 The third-party application for the mark MAXWELL THOMAS is of
no probative value. Glamorene Products Corp. v. Earl Grissmer
Co., Inc., 203 USPQ 1090, 1092 n.5 (TTAB 1979) (evidence only of
the filing of the application).

7 As noted above, the examples consisting of pending applications
are not probative.
Serial No. 85064187
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(furniture and fabrics) for similar marks to coexist,
presumably to support the idea that consumers are
accustomed to distinguishing source among close marks in
this industry. The evidence does not support such a
proposition. Applicant proffers four examples with no
information as to the actual goods and the involved marks
have distinguishing elements.
We turn to the du Pont factor of the relatedness of
the goods, keeping in mind, at least as to the mark MAXWELL
in Registration No. 1829457, that where the marks are
“identical the degree of relatedness between the respective
goods that is necessary to support a finding that the goods
are related under the second du Pont factor is less than it
would be if the marks were not identical; there need be
only a viable relationship between the respective goods.”
Davey Products, 92 USPQ2d at 1202.
The examining attorney contends that applicant’s
leather furniture goods are related to registrant’s fabric
products arguing that “conditions in commerce illustrate
that the same entity can be the source of both Class 20
furniture items, such as leather furniture, sofas, chairs,
loveseats, and the source of Class 24 fabrics and fabric
products, such as bedspreads, bed skirts, pillow cases,
pillow shams, coverlets and duvet covers.” Br. p. 13. In
Serial No. 85064187
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support of her position, the examining attorney submitted
several third-party used-based8 registrations that show
furniture and fabric (both as a retail product and for
further manufacture into other products) under the same
mark. These third-party registrations may serve to show
that the goods of the parties are of a kind that may
emanate from a single source under a single mark. In re
Albert Trostel & Sons Co., 29 USPQ2d 183, 1785-86 (TTAB
1993). See, e.g., Reg. No. 1593063 for the mark George
Smith for upholstery fabric and living room type furniture;
Reg. No. 3445883 for the mark SOMERSET BAY THE COLORS OF A
LIFE WELL LIVED for upholstery fabrics and furniture; Reg.
No. 3425465 for the mark THOM HOME for, inter alia,
furniture and upholstery fabrics, fabrics for the
manufacture of furniture, pillows, cushions, and window
coverings; Reg. No. 3742763 for the mark NATURALMAT for,
inter alia, furniture and bed linen, bedspreads, quilted
linen fabric; Reg. No. 3714921 for the mark KASHMIRA for
furniture and furnishing and upholstery fabrics; Reg. No.
3820630 for the mark MARIETTE HIMES GOMEZ for, inter alia,
sofas, chaise lounges and ottomans, and upholstery fabrics;

8 The non use-based registrations (i.e., based on Sections 44 or
66 of the Trademark Act), do not have probative value. In
addition, Registration No. 3055992, from which furniture has been
deleted from the identification of goods, is of no probative
value.
Serial No. 85064187
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Reg. No. 3905438 for the mark LUXURY FOR LIFE for, inter
alia, furniture for house, office and garden and fabrics
for textile use, furnishing and upholstery fabrics, textile
fabrics for home and commercial interiors; Reg. No. 2855052
for the mark A BEAUTIFUL EXPERIENCE for, inter alia, living
room furniture, sofas, couches, and upholstery fabrics and
drapery fabrics, drapery and bedcoverings, fabric trim for
furniture and drapery; Reg. No. 3046554 for the mark OSCAR
DE LA RENTA for furniture and fabrics, namely, upholstery
fabrics, fabrics for the manufacture of bed sheets, bed
blankets, bed spreads and table linens; Reg. No. 3598499
for the mark JEFF BURTON for, inter alia, leather furniture
and bedding sets consisting of sheets, pillow cases, pillow
shams, comforters, and dust ruffles; and Reg. No. 3324621
for the mark VICENTE WOLF for, inter alia, upholstered and
leather furniture and bed skirts, duvet covers,
pillowcases, cotton fabric, linen, and spun silk fabrics
for use in the designer fabric collections, textile fabrics
for the manufacture of home and commercial interiors. In
addition, the examining attorney submitted printouts from
websites of third-parties showing furniture and fabric or
bedding (e.g., duvets) for sale under the same mark. See,
e.g., June 2, 2011 Office Action, www.boconcept.us;
www.karvet.com; www.michaelsmithinc.com.
Serial No. 85064187
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The examining attorney contends that the goods are
complementary and the record shows that the goods in issue
are “used together or otherwise purchased by the same
purchasers for the same or related purposes.” Br. p. 20.
Applicant argues that it “would be incorrect to
conclude that fabric, which is commonly sold in bolts, and
ready-made leather furniture are complementary goods the
consumer may purchase together or use together which leads
to source confusion.” Br. p. 14.
With regard to the goods in Registration No. 1829457
namely, “fabric products; namely drapery fabric, upholstery
fabric, quilted bedspreads, bedskirts, pillow cases, pillow
shams, coverlets and duvet covers,” this identification
encompasses both fabric and finished products made from
fabric sold at the retail level. The record shows that
such goods frequently emanate from the same source as
applicant’s furniture products, even as limited to leather
furniture. See, e.g., Registration Nos. 3324621 and
Registration No. 3598499. Thus, we find applicant’s goods
to be sufficiently related to registrant’s goods.
We further find that the record demonstrates such
goods travel through the same channels of trade. As to
applicant’s arguments regarding applicant’s and
registrant’s actual trade channels and classes of
Serial No. 85064187
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purchasers for this registration, i.e., that applicant only
sells its furniture at the retail level and registrant only
sells fabric at the wholesale level to sophisticated
purchasers, those arguments are inapposite. Applicant’s
application is not limited to retail sales and, therefore,
includes the wholesale trade channel. In addition, the
identification in this registration is not limited to the
wholesale market and includes finished products such as
duvet covers; therefore, we must consider both retail and
wholesale channels of trade for these goods.
In addition, because of the absence of such
limitations we must consider all potential purchasers for
such goods and we must make our determination based on the
least sophisticated purchaser, i.e., the general public.
With regard to Registration No. 3523276, as
identified, each item in the identification is limited by
the phrase “for the manufacture of.” We recognize the
record contains a handful of examples of third-party
registrations that include “fabric for the manufacture of”
along with other finished products; however, we do not find
this a sufficient basis upon which to find that an ordinary
channel of trade for fabric for further manufacture would
include the retail trade channel. Thus, we find that
registrant’s goods in this registration are limited by
Serial No. 85064187
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trade channel. As such, the only overlapping customers
would be more sophisticated (for example, as applicant
argues, accredited interior designers) than the average
purchaser of furniture. However, given the close
similarity of the marks and relationship between the
respective goods, we do not believe this factor outweighs
the other du Pont factors. This case does not present
circumstances similar to those wherein sophisticated
purchasing outweighs the other factors. See, e.g., Elec.
Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d
713, 21 USPQ2d 1388, 1402 (Fed. Cir. 1992). Purchasers of
registrant’s upholstery fabric and fabrics for other
furniture accessories (pillows, covers, etc.), in designing
the interior of a room could reasonably believe that
applicant’s leather furniture belongs to that furnishings
product line and emanates from or is otherwise associated
with registrant.
In view of the above, the du Pont factors of the
similarity of the goods, the channels of trade, and classes
of purchasers favor a finding of likelihood of confusion as
to the cited registrations.
Applicant also argues that its mark has been in use
since 2005 and there are no known instances of actual
confusion. First, the inquiry here is likelihood of
Serial No. 85064187
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confusion, not actual confusion. HRL Associates Inc. v.
Weiss Associates Inc., 12 USPQ2d 1819, 1824 (TTAB 1989)
aff’d, 14 USPQ2d 1840 (Fed. Cir. 1990). The Court of
Appeals for the Federal Circuit has observed, “A showing of
actual confusion would of course be highly probative, if
not conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence of
actual confusion carries little weight, J.C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 964, 144 USPQ 435, 438
(CCPA 1965), especially in an ex parte context.” In re
Majestic Distilling Co., Inc., 65 USPQ2d at 1205. Thus,
regardless of the evidence, an ex parte proceeding is ill-
equipped for a fair determination inasmuch as the
registrant does not have an opportunity to defend its
registration.
Further, based on applicant’s statements that the
registrant and applicant do not offer their goods in the
same trade channels, it appears that there has not been a
meaningful opportunity for confusion to occur.
In balancing the relevant du Pont factors in this
case, we find that because the marks are identical and very
similar, the goods are related, the channels of trade and
the classes of consumers overlap, confusion is likely
between applicant’s mark and the marks in the cited
Serial No. 85064187
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registrations. To the extent there are any doubts, we
resolve them, as we must, in favor of the registrant. In
re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed as to both cited
registrations.