Truth Hardware Corporation

Trademark Trial and Appeal Board

Sep 21, 2006

No. 78421793 (T.T.A.B. Sep. 21, 2006)

Mailed:
21 September 2006
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Truth Hardware Corporation
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Serial No. 78421793
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Michael A. Bondi of Patterson, Thuente, Skaar & Christensen
for Truth Hardware Corporation.

John Dwyer, Trademark Examining Attorney, Law Office 116
(M.L. Hershkowitz, Managing Attorney).
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Before Bucher, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On May 19, 2004, applicant Truth Hardware Corporation
applied to register the mark ENCORE (in standard character
form) on the Principal Register for “window hardware made
primarily of metal, namely, brackets, tracks, latches,
locks, knobs, handles, hinges, operators, and leversets,
sold exclusively to manufacturers” in Class 6.1 The

1 Serial No. 78421793. The application is based on applicant’s
allegation of a bona fide intention to use the mark in commerce.
In its Reply Brief at 1, applicant has proposed adding the word
“window” before “manufacturers” in its identification of goods.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78421793
2
examining attorney has refused to register applicant’s mark
under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) because of Registration No. 2,870,619 (issued
August 3, 2004) for the identical mark for “window shutters
composed primarily of fiberglass or plastic” in Class 19.
Inasmuch as the issue in this case is whether there is
a likelihood of confusion if applicant were to use its mark
on the identified goods in view of the registered mark for
the identified goods, we analyze the facts as they relate
to the relevant factors set out in In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003). See also In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); and Recot,
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed.
Cir. 2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
The first factor, the similarity of the marks, is
straightforward inasmuch as applicant’s and registrant’s
marks are absolutely identical. When both parties are
Ser No. 78421793
3
using or intend to use the identical designation, “the
relationship between the goods on which the parties use
their marks need not be as great or as close as in the
situation where the marks are not identical or strikingly
similar.” Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ
70, 78 (TTAB 1981). See also In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“[E]ven when
goods or services are not competitive or intrinsically
related, the use of identical marks can lead to an
assumption that there is a common source”).
Next, we address the issue of whether the goods of the
parties are related. Applicant’s goods are “window
hardware made primarily of metal, namely, brackets, tracks,
latches, locks, knobs, handles, hinges, operators, and
leversets, sold exclusively to manufacturers.” In effect,
applicant’s goods are various items of metal window
hardware sold to manufacturers. Registrant’s goods are
“window shutters composed primarily of fiberglass or
plastic.”
When we compare the goods, it is imperative that we
consider them as they are identified in the respective
identification of goods. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
Ser No. 78421793
4
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”). See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”). Regarding
the identified goods, we do not read limitations into the
identification of goods. Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 940 (Fed. Cir. 1983)(“There is no
specific limitation and nothing in the inherent nature of
[registrant’s] mark or goods that restricts the usage of
SQUIRT for balloons to promotion of soft drinks. The
Board, thus, improperly read limitations into the
registration”). However, if applicant or registrant has
included limitations in its identification of goods, we do
not ignore them.
In this case, registrant’s identification of goods
contains no restrictions so we must consider the goods to
include all types of fiberglass and plastic window
shutters. Regarding applicant’s metal window hardware,
Ser No. 78421793
5
however, we must consider the fact that the hardware is
limited to hardware sold exclusively to manufacturers.
To demonstrate that the goods are related, the
examining attorney refers to the following evidence (Brief,
pp. 6-7):
The Boston Globe, July 31, 2003
“… right down to the hardware holding the window
shutters.”

Chicago Daily-Herald, February 23, 2003.
“They also found about 150 original, louvered window
shutters in the attic of the building. Each one
features original hardware…”

Daily Press (Newport News, VA), January 13, 1999.
“That original window frame was preserved unchanged
with its shutter hardware intact. That made it
possible to restore the building with its original
windows and shutters.”

Intelligencer Journal (Lancaster, PA), March 14, 1998.
“… window and shutter hardware – such as hinges,
knobs, locks and handles, …, window weights … have
been recycled.”

The Dallas Morning News, April 6, 1995.
“The recovered hardware includes about 100 items,
including … window pulls, key plates and hinges for
window shutters.”

The Washington Post, October 3, 1985.
“Among the most popular items are pieces of metal
hardware for wooden window shutters.”

As a result of this evidence, the examining attorney
argues (Brief, p. 7):
Applicant notes that some of the articles seem to
differentiate between “window hardware” and “shutter
hardware,” and argues that the registrant’s goods
cannot be used with the applicant’s goods. The
Ser No. 78421793
6
registrant, however, has made no evidence of record
that the terms “window hardware” and “shutter
hardware” are specifically defined and precise terms,
or that “window hardware” is necessarily separate and
different from “shutter hardware.” It is equally
noteworthy that some of the articles do not seem to
differentiate between “window hardware” and “shutter
hardware.” This suggests that focusing on the
proximity of the word “hardware” in relation to either
“window” or “shutter” is not relevant. That is, the
operative word is “hardware” and hardware can be used
with “window” products, including both windows and
window shutters. Moreover, the applicant’s
identification does not specify the types of
“manufacturers” to whom the goods are sold, nor what
goods they are used to manufacture. As currently
identified, the applicant’s goods could be sold to any
type of manufacturer and incorporated into any type of
window product, e.g., windows, window screens, window
blinds, window curtains, and window shutters.

Applicant responds (Reply Brief at 3) that:
It is noted that the above excerpted articles
differentiate between different types of hardware,
including window hardware and shutter hardware, since
the adjective “window” or “shutter” is used to modify
the term “hardware.” The Examining Attorney noted in
the Examining Attorney’s Brief that the operative word
is “hardware” and hardware can be used with window
products, including both windows and window shutters.”
However, as noted in the Intelligencer Journal
(above), hardware is also used in association with
doors, “door, window and shutter hardware – such as
hinges, knobs, locks and handles…” Hence, hardware
can be used with a number of goods, including doors,
windows, and shutters and but does not necessarily
mean that the same hardware could be used for all of
these goods, e.g. door hardware used on shutters.

Based on the evidence, we cannot conclude that the
terms “window hardware” and “shutter hardware” are
interchangeable terms. We must consider the goods as they
are identified in the identification of goods and
Ser No. 78421793
7
applicant’s hardware is limited to windows. The mere fact
that articles use the term “window and shutter hardware”
does not demonstrate that the hardware is interchangeable.
Indeed, the usage suggests a difference between the items
such as the terms “baseball and football games” or “men’s
and women’s clothing” suggest that there are differences
between the “games” and the “clothing.” It also does not
shift the burden to applicant to prove that they are not
the same. Furthermore, as applicant has pointed out, the
expanded quotation from the Intelligencer Journal article
refers to “door, window, and shutter hardware.” The
examining attorney has not provided sufficient evidence
that there is an interchangeability between “window
hardware” and “shutter hardware.” Second, applicant’s
goods are limited to window hardware or hardware for
windows. We do not agree with the examining attorney that
the identification of goods includes virtually anything
modified by the word “window” such as window screens,
window blinds, window curtains, or even window ledges or
window flower boxes.
The examining attorney also argues that applicant does
not specifically limit its goods to window hardware sold
exclusively to window manufacturers. In its brief,
applicant had assumed that the term "manufacturers" was
Ser No. 78421793
8
limited to “window manufacturers.” See, e.g., Brief, p. 5
(“it is unlikely that a window manufacturer would purchase
window shutters to sell as a unit with his own manufactured
windows”). In its Reply Brief (p. 1), applicant has
offered to include the word in its identification of goods.
While the examining attorney can determine whether such an
amendment is permitted, the lack of the term “window” is
not significant to our determination here because the
record does not show that the term “manufacturers” and
“window manufacturers” would be substantially different.
Obviously, window hardware sold to manufacturers includes
“window manufacturers.” However, while the examining
attorney argues (Brief at 10) that “applicant’s hardware
could even be purchased by manufacturers of windows
shutters for use in or on the shutters,” there is no
evidence that “window hardware” is sold to any other
manufacturers or that any other manufacturers are likely to
purchase shutters and window hardware. The mere fact that
there are other types of “hardware” such as “shutter” and
“door” hardware does not mean that there is any overlap
with window hardware or that “shutter manufacturers” are
likely to purchase “window hardware.” It would be sheer
speculation on our part to assume that there is some
overlap in these cases. For example, if the goods were
Ser No. 78421793
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“airplane engine parts sold to manufacturers,” we would not
assume, without evidence, that these parts would be used by
automobile engine manufacturers simply because there are
articles that refer to “aircraft and auto parts.” While
the examining attorney also refers to a registration (No.
2,510,664) that includes metal windows, metal window
casements, and non-metal window frames and another (No.
2,906,920) for metal window treatments and non-metal window
shutters, the record is insufficient to demonstrate that
the sources of plastic window shutters are likely to expand
into producing metal window hardware or that applicant’s
metal window hardware sold exclusively to manufacturers and
registrant’s shutters are related.2
If we viewed the goods without any limitations, we
would be inclined to agree with the examining attorney that
the window shutters and metal window hardware are related.

2 Several other registrations that the examining attorney
submitted involved foreign registrations or house marks, which
are entitled to little, if any, weight. In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (“11 of the 15
third-party applications and registrations… were filed under the
provisions of Section 44 of the Act…. Such registrations and
applications are not even necessarily evidence of a serious
intent to use the marks shown therein in the United States on all
of the listed goods and services, and they have very little, if
any, persuasive value on the point for which they were offered.
Moreover, two of the four registrations which were based on use
were issued to Saks & Company and to Knott's Berry Farm, owners
of a large department store and an amusement or theme center,
respectively, where a wide variety of goods and services are
sold”).
Ser No. 78421793
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However, the Office permits applicants to limit
identification of goods that are by themselves acceptable.
TMEP § 1402.06(a) (4th ed. rev. April 2005) (“Under 37
C.F.R. §2.71(a), there is no general prohibition against
specific types of limitations in identifications of goods
and services, such as the use of negatives, exceptions or
similar language. Limitations on identifications phrased
in the negative or as exceptions are acceptable, if they
are otherwise proper”). Therefore, we cannot dismiss the
language in applicant’s identification of goods that limits
these goods to those sold exclusively to manufacturers.
With this limitation, applicant has changed the likelihood
of confusion analysis.
The limitation changes our analysis in two ways in
addition to making the goods less related. First, the
purchasers of applicant’s goods would be limited to
sophisticated or careful purchasers. Buyers of window
hardware for manufactures are not ordinary consumers and it
would be expected that these purchasers would be careful
and sophisticated purchasers. This fact limits the
likelihood that there would be confusion. Astra
Pharmaceutical Products, Inc. v. Beckman Instruments, Inc.,
718 F.2d 1201, 220 USPQ 786, 790 (1st Cir. 1983) (“Perhaps
the most critical factor that weighs against Astra in our
Ser No. 78421793
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consideration of this issue is the sophistication of the
class of prospective purchasers of the subject products.
If likelihood of confusion exists, it must be based on the
confusion of some relevant person; i.e., a customer or
purchaser. And there is always less likelihood of
confusion where goods are expensive and purchased after
careful consideration”). In this case, any overlap of
purchasers of applicant’s and registrant’s goods would
occur only among the professionals who buy for
manufacturers and these purchasers would be much less
likely to be confused.
Another factor that limits the likelihood of confusion
is the channels of trade. Applicant’s goods would be sold
to manufacturers. This is a significant limitation. These
goods would not be sold in the retail market or to
wholesalers. While registrant’s goods are not limited to
any particular channels of trade, there is no evidence that
window or other manufacturers would also be in the market
for window shutters.
We conclude by holding that there is no likelihood of
confusion in this case. The limitation of the goods in the
application means that its goods are sold only to
manufacturers. We have little evidence to find that these
purchasers would be confused and, therefore, while
Ser No. 78421793
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confusion may be possible, we cannot conclude that it is
likely. See, e.g., Electronic Design and Sales Inc. v.
Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388,
1392-93 (Fed. Cir. 1992) (“[O]pposer urges that persons who
use opposer’s data processing and telecommunications
services at work and who buy batteries at retail stores
would be confused as to source … [T]he potential for
confusion appears a mere possibility not a probability”).
See also Bongrain International (American) Corp. v. Delice
de France, Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1779 (Fed.
Cir. 1987) (The “statute refers to likelihood, not the mere
possibility, of confusion”).
Decision: The examining attorney’s refusal to
register applicant’s mark under Section 2(d) of the
Trademark Act is reversed.